INTELLECTUAL PROPERTY SURVEYS ANNUAL CUMULATIVE UPDATE 2010

Gerald L. Ford

Copyright © 2011 Gerald L. Ford All Rights Reserved

No Claim to Orig. US Gov. Works

The author sincerely thanks Sherry J. Laufenburger, a Research Associate at Ford Bubala & Associates,

for her diligent research and assistance.

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TABLE OF CONTENTS

Introduction………………………………………………………………………….………

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Genericness Surveys…………………………………………………………………………

4

Descriptiveness/Suggestiveness Surveys……………………………………………………

19

Secondary Meaning Surveys………………………………………………………………...

21

Likelihood of Confusion Surveys……………………………………………………………

48

False Advertising Surveys…………………………………………………………………...

113

Fame and Dilution Surveys.…………………………………………………………………

135

False Endorsement Surveys………………………………………………………………….

150

Geographically Deceptively Misdescriptive Surveys……………………………………….

151

Scandalous/Disparaging Mark Surveys……………………………………………………..

152

Copyright Surveys…………………………………………………………………………..

153

Patent Surveys..…………………………………………………………………………….. 155 First Amendment Issues..……...…………………………………………………………… 159 Daubert/Admissibility Issues………………………………………………………………..

161

Procedural Issues……………………………………………………………………………. 197 Bibliography: Intellectual Property Surveys By Issue……...………………………………

200

Bibliography: Intellectual Property Surveys By Circuit……………………………………

260

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INTRODUCTION

The following provides short excerpts of a number of selected opinions referencing survey evidence published in opinions from January 1998 through December 2010, which might be of interest to the Lanham Act litigator. For opinions referencing survey evidence prior to January 1998, see Phyllis J. Welter’s Trademark Surveys, West Group, 1999.

The bibliographies to this paper provide citations, by Circuit and by survey issue, for all

identified opinions published during the January 1998 through December 2010 time period in which survey evidence was referenced.

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GENERICNESS SURVEYS

E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585, *17-*20 (3rd Cir. 2008)

“The primary significance test…inquires whether the primary significance of a term in the minds of the consuming public is the product or the producer.”…We therefore inquire whether the consuming public understands “Cocoa Butter Formula” to refer to a product genus or to a producer… Plaintiffs seeking to establish the descriptiveness of a mark often use one of two types of survey evidence. J. Thomas McCarthy…describes a “Teflon survey” as “essentially a mini-course in the generic versus trademark distinction, followed by a test.”…That survey runs a participant through a number of terms (such as “washing machine” and “Chevrolet”), asking whether they are common names or brand names. After the participant grasps the distinction, the survey asks the participant to categorize a number of terms, including the term at issue… A “Thermos survey,” on the other hand, asks the respondent how he or she would ask for the product at issue. If, to use the term under dispute in the case from which the survey gets its name, the respondents largely say the brand name (“Thermos”) rather than the initial product category name (“Vacuum Bottle”), the survey provides evidence that the brand name (“Thermos”) has become a generic term for the product category…To put this in the terms of the primary significance test, the term would be generic because the consumers would be using it to refer to the product category rather than a producer who makes products within that product category.

The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495, *8-*9, *11 (E.D. Tex. 2008)

[Defendant] relies in part on the survey of [its expert] to demonstrate that the term is merely generic. In [the] Teflon survey, [Defendant’s expert] notes that 77% of those surveyed had an opinion that Brooklyn style pizza was a common generic name...[Defendant] points out that even a survey showing of 60% is enough to hold that the name is merely generic. E.I. Dupont de Nemours & Co. v. Yoshida Int'l, Inc., 393 F.Supp. 502 (E.D.N.Y. 1975). [Defendant] also cites a number of articles from newspaper advertisements which mention a Brooklyn style pizza. For example, “The demand for Pucci’s Brooklyn style pizza would seem to be greater than the supply.” “The soul of a genuinely scrumptious Brooklyn - style pizza doesn’t reside in fancy gimmicks or a host of bizarre toppings”...Even in the [Dallas-Fort Worth] metroplex, Pastazio’s Pizza cuisine is highlighted as the Brooklyn style pizza... As [Defendant] points out, it has submitted 28 media articles referring to the generic use of the term. Advertising use of a word in its generic sense can be compelling evidence of the general public’s perception that the term is generic… [Defendant] also points out that it is not alone in the use of the term Brooklyn style pizza and claims over a hundred restaurants around the country

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use the moniker. [Defendant] also argues that even the Patent and Trademark office recognizes Brooklyn style pizza as a generic term not entitled to protection…

* Whether [Brooklyn style pizza] is viewed as a generic term, or whether it is descriptive, the result is the same. There is no trademark violation…

Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353, *24, *26-*28 (C.D. Cal. 2008)

Plaintiff has introduced evidence of a consumer survey…known as the ‘Teflon Survey’ design which has been accepted and given weight by the courts and is frequently cited…

… …Defendant…submitted survey evidence concerning whether “organic food bar” is a generic term…In [the] survey…consumers were shown a variety of nutrition bars and asked what they would ask for if they were looking for this product in a grocery store…The majority of consumers said “energy bar” or “protein bar.” Only three consumers out of 229 said “organic food bar.” Defendant introduces this to prove that “organic food bar” is not a generic term.

… …Defendant’s papers offer no case law in support of its open-ended survey questions...just because a term is not the most generic term for a product does not mean it is not generic. This Court does not see how the [Defendant’s expert’s] Survey supports, in any meaningful way, Defendant’s argument that “organic food bar” is not generic…

In re Hotels.com, L.P., 2008 T.T.A.B. LEXIS 60, *4-*5, *7 (T.T.A.B. 2008)

In view of the adverse decision in the prior case, and during suspension of the present appeal, applicant commissioned a survey to determine the significance to the public of the term HOTELS.COM. After the survey was completed, applicant requested remand of the application to the examining attorney for reconsideration of the refusal in light of this new evidence… The examining attorney argues in her brief that in view of the prior Board proceeding involving the same applicant and, as applicant admits, the same issues, the claim presented in this appeal, i.e., that HOTELS.COM is not generic and may be registered on a showing of acquired distinctiveness, is barred by res judicata…

… Under the circumstances, and in an exercise of caution, we find that the survey evidence constitutes a change in facts sufficient to avoid application of the doctrine of res judicata and to justify re-examining applicant’s claim that the term HOTELS.COM is not generic…

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Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337, 341-345 (D. R.I. 2007)

Notwithstanding the protection to which registered (or unregistered) marks may be entitled, a finding of genericness will render the term unprotectable… For a term to be generic, its “primary significance…to the relevant public must be to identify the nature of a good, rather than its source.”…This can occur in one of two ways. First, an invented name may become “genericized,”…that is, the term “began life as a ‘coined term’” but became generic through common usage…Second, a term may be generic if it was commonly used prior to its association with the specific products at issue… Under either approach, evidence of the relevant public’s understanding of a term can be used to prove genericness…This evidence may include competitors’ use (use of the term by competitors which has not been contested by plaintiff), plaintiff’s use (use of the term as a generic name by the plaintiff), dictionary definitions, media usage, testimony of persons in the trade, and consumer surveys…

* …[Defendant] submitted compelling evidence that the term “Memory” has been used to describe a generic card game since before [Plaintiff] obtained its first trademark in 1967… [Defendant] also submitted dictionary use as evidence establishing the genericness of the term…

* [Defendant] has additionally adduced evidence of [Plaintiff’s] own generic use of the term…

* The substantial volume of evidence of competitors’ use of the term “Memory” to describe a memory matching game is particularly significant, and probative, for the question of genericness because “the more members of the public see a term used by competitors in the field, the less likely they will be to identify the term with one particular producer.”… It is true that [Defendant] failed to offer any consumer surveys in support of its genericness claim, and that, additionally, [Plaintiff] offered its own brand penetration surveys, which, it claims, demonstrate that consumers associate [Plaintiff’s] specific game with the term “Memory.”…But, it has been made clear that such evidence is not dispositive on the question of genericness; rather, it is merely one of several factors that may be considered…This is also true of relative sales volume. Although [Plaintiff] argues that its dominant market position rebuts any claim that the relevant public would view the term “Memory” as generic, in the absence of actual evidence proving this, the Court cannot draw such a conclusion…There has been no presentation of evidence suggesting that consumers associate the term “Memory” with [Plaintiff’s] game, just that [Plaintiff’s] game occupies a large market share… In sum, at this juncture, [Defendant] has carried its burden of proving by a preponderance of the evidence that the term “Memory” is and has been a generic term not entitled to trademark protection.

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Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565, *2-*4, *26-*27 (N.D. Ga. 2007)

…[Defendant] commissioned…a survey…designed to determine whether the term NITE LITES is or is not a generic designation for systems that provide low-voltage nighttime illumination of the exteriors of upscale residences…[Defendant’s expert] designed the survey based on the “Thermos Survey” model, a product category survey that generally describes the product and asks respondents how they would ask for the product in a store… [Defendant’s] survey consisted of interviewing a random sample of 200 homeowners…

* The interview consisted of two sets of questions - screening questions and main questions. The screening questions were designed to identify individuals within the relevant consuming public for outside low-voltage home illumination,…termed the “relevant universe” or “survey universe,” and asked:

1. Do you own your own home?… 2. Is it a detached home, a town home, an attached house, a mobile house, or some other?… 3. When you bought the home, did it cost less than $ 300,000 or $ 300,000 or more?… 4. Are you familiar with the practice of homeowners illuminating their trees and the outside of their houses with a low voltage system?… 5. Have you ever illuminated your trees and the outside of your house with a low voltage system?… 6. In the next 12 months, how likely would you be to consider illuminating your trees and house with a low voltage system: Very likely, somewhat likely, or not likely?…

The main questions were designed to identify what terms the relevant universe used to describe a system of outside low-voltage home illumination, and asked:

1. What do you call such a system of outside illumination?… 2. Do you know the names of manufacturers of such illuminating systems?… 3. Who are those manufacturers? 4. Can you name any trademarks or brand names of such outside illumination systems?… 5. What are those brand names?

*

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…The court finds that [Defendant’s expert’s] survey meets the criteria of helpfulness to the trier of fact given the specific allegations and contentions of this case.

Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2007 U.S. Dist. LEXIS 2525, *34-*35 (C.D. Cal. 2007)

KFI nevertheless contends that “kettle” is a descriptive mark, not a generic one. KFI argues that its survey evidence shows that consumers view “kettle” as a brand name, and not a generic name. KFI’s survey…found that 52% of the public viewed “kettle” as a brand name…KFI’s survey, however, has several flaws in its methodology. It uses a circular definition for what a brand name is, it fails to screen subjects to see if they understood what a brand is, and it fails to identify or account for any order bias that might have been produced…Also, CFI introduced its own consumer survey…that produced essentially opposite results. Only 34.8% of those surveyed…thought “kettle” was a brand name…In light of the foregoing, the survey evidence presented by KFI is essentially in equipoise with that offered by CFI, and is of only limited evidentiary value.

Tea Bd. of India v. The Republic of Tea, Inc., 2006 T.T.A.B. LEXIS 330, *42, *43 & n.20, *44-*45, *46 & n.22, *48 (T.T.A.B. 2006)

Applicant points to the survey in support of its contention that the mark is generic and only denotes a type of tea, and then proceeds to argue that the survey “clearly establishes that the public, as a whole, does not understand that Darjeeling tea comes only from the Darjeeling region of India”; and that there is no association in the public’s mind between the term Darjeeling as applied to tea and any specific geographic region….

… To the extent applicant is relying on the survey to show that the term

Darjeeling is generic among consumers, which is the actual issue in the case, the survey fails to do so and, as far as we can tell, was not even designed to show that the term is generic. In addition, we find the survey is flawed at least in interpretation of what it does purport to show, and is of little probative value.

This was a telephone survey…The stated purpose of the survey was “to determine what consumers say Darjeeling tea is.” The survey involved 301 respondents who answered preliminary questions indicating that they had purchased tea for themselves or others in their household during the past year and that they are “personally familiar” with Darjeeling tea.

Each respondent was asked the open-ended question “What is Darjeeling tea?” where the respondents could give as many responses as they wished. This question was followed up by the probe “Anything else?”…

Applicant introduced, through the testimony of [Applicant’s expert], a written report of the survey which includes, not the verbatim responses, [n.20 Opposer points out that it requested the database of actual responses during the deposition of [Applicant’s expert] but did not receive them and applicant does not

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dispute that the actual responses were not provided.] but [a] summary of responses and a separate “tabulation” of responses...

Under each category, [Applicant’s expert] listed the answers or types of answers which in his judgment should fall into that category. For example, under the category “A type of tea,” he listed the following answers or types of answers along with the number of individuals who gave those answers:

A type of tea (32.4%)

general reference to type 83 black tea 34 herbal tea 15 green tea 11 flavored tea 7 caffeinated tea 4 English tea 3

[Applicant’s expert] totaled the percentages of all categories except the

category “A tea from India” and came to the following conclusions: that “a sizable majority (nearly 75%) of the 485 answers…described [Darjeeling] as a type of tea, a tea they recognize, a tea with certain qualities, or a tea that they may or may not buy”; that “over 75 percent of the 301 respondents did not make any mention of a ‘tea from India’…”; and finally that “the vast majority of persons…do not think of Darjeeling tea as a ‘tea from India.’”…

First, [Applicant’s expert] did not conclude or even suggest that the results show that Darjeeling is perceived as a generic term. Nor do the results support that finding.

Second, we have numerous problems with the way in which [Applicant’s expert] interpreted or “coded” the responses as well as the manner in which he grouped the coded responses, and as a result, we have no confidence that the “32.4%” figure, which represents the number of answers allegedly identifying Darjeeling as a “type” of tea, is accurate. [n.22 Apart from the many issues we have concerning [Applicant’s expert’s] characterization of any given answer as a “type” of tea, even if the respondents themselves actually thought of Darjeeling as a “type” of tea or actually used the word “type” in their answers, there is no way of knowing what the respondents understood the word “type” to mean, that is, whether they understood the word to mean a product brand or source, or a product genus. For example, we cannot determine whether the 34 respondents who gave the answer “black tea” viewed Darjeeling (which is a black tea) as a type of black tea from a particular place or a type of black tea regardless of where it comes from.]…

… Simply put, applicant’s survey fails to either show or support an inference

that the primary significance of DARJEELING is generic.

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Ugg Holdings, Inc. v. Clifford Severn, et al., 2005 U.S. Dist. LEXIS 45783, *16-*17 (C.D. Cal. 2005)

…Plaintiff submitted evidence of a “Teflon survey” conducted [among] 313 women, ages 18 to 45, each of whom either had purchased a pair of boots or casual shoes (excluding athletic footwear) that cost $100 or more in the past 12 months or expected to do so in the next 12 months…Respondents were asked whether they considered the term “UGG” to be a “common name or a brand name.”…The data collected…demonstrate that…“58% of all survey respondents thought UGG was a brand name, whereas only 11 % thought UGG was a common name…Among those survey respondents who had an opinion, 84% thought UGG was a brand name, and not a common name.”…Defendants’ genericness expert, reached conclusions similar to [Plaintiff’s expert]. [Defendants’ expert’s] survey indicated that 57% of respondents recognized “UGG” as a brand, while only 6% considered it a common name…

In re Network Associates Technology, Inc., 2005 T.T.A.B. LEXIS 27,*9, *14-*16 (T.T.A.B. 2005) This disposition is not citable as a precedent of the T.T.A.B.

In addition, applicant introduced a survey to demonstrate that the term VIRUSSCAN is not generic for computer software…The survey asked the following relevant questions:

Q6 What do you call the type or category of computer software that is designed to protect and secure computer data, software, and computer communications networks?

Q7 What other name or names, if any, do you use when referring to this type or category of software?…

… …At first glance, applicant’s survey results appear very impressive. Of

110 respondents to survey questions six and seven, only one responded that the term “virus scan” was a name for the software and another responded that “virus protection scan” was the generic name of the goods. On its face, these results of the survey would strongly support applicant’s argument that its mark was not generic.

However, upon closer analysis, the results are less impressive. Applicant’s survey asked “What do you call the type or category of computer software that is designed to protect and secure computer data, software, and computer communications networks.” The largest response (37 of 110) to the initial question identified “firewall,” “firewall software” or “firewall protection” as the generic name of the software. Another 14 responses identified “security” and “security protection” as the generic name, while 22 identified other names. The largest number of responses identified a generic term for a different type of computer protection product, i.e. a firewall, in response to applicant’s survey question No. 6…Applicant’s survey questions are more like a guessing game. The questions provide just enough information so that participants can guess about applicant’s product but not enough information to understand what the specific

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product is. Applicant’s survey would be similar to asking prospective purchasers: “What do you drive that has four wheels and a motor?” While it is likely that the vast majority of responses would be “car,” “truck,” and “motor vehicle,” it would hardly demonstrate that unmentioned terms such as “SUV,” “subcompact,” or “sedan” were not generic terms also…A survey that establishes a generic name for a product not at issue…is not very relevant.

While we have reason to question the persuasiveness of the survey, we must give it some weight…

Robert Donchez v. Coors Brewing Co., 392 F.3d 1211, 1218 (10th Cir. 2004)

The last piece of evidence cited…concerns the results of a telephone survey conducted by defendants. Approximately 200 persons…were asked “whether nine (9) different names,” including the term “beerman,” were “‘common’ names or…‘brand’ names.”…The term “beerman” “was recognized as a common or generic name by 75.9% of the” respondents…[Plaintiff] however, attempts to interpret the results in his favor by noting that several other terms, including “draft beer,” “popcorn,” “vendor,” and “mascot,” were found by a higher percentage of the respondents (i.e., from 90.1% to 95.6%) to be common or generic terms. Further…[Plaintiff’s expert] opined “there is a statistically significant difference between the responses obtained for ‘beerman’ and the [other] so-called common names in the survey.” Again, however, we are not persuaded that a rational trier of fact could find, based on [Plaintiff’s] interpretation of the defendants’ survey results, that the term “beerman” is descriptive rather than generic. In particular, the number of survey respondents classifying the term “beerman” as generic was clearly substantial...

The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983, 989, 993 (E.D. Mo. 2004)

[Plaintiff] presented survey evidence…to evaluate and quantify the level of consumer recognition of the term “steakburger.”…The [survey respondents] were read a list of items and asked whether they most often identified certain listed items as something that comes from more than one company or something that comes from only one company…

… I do not agree with [Plaintiff’s] argument that the [Plaintiff’s experts’] surveys show the non-genericness of the term “steakburger.”… At most, the [Plaintiff’s first expert’s] study is directed at consumer awareness of the term and consumer familiarity with Steak n Shake, which advertises heavily that it is “Famous for Steakburgers.” …[Plaintiff’s first expert] asked whether respondents “most often” associated the term with one company or more than one company. “Steakburger” was highly associated with Steak n Shake in the markets tested, but this fails to advance an understanding of the public perception of what a steakburger is…

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Jacob Zimmerman v. Nat’l Ass’n of Realtors, 2004 T.T.A.B. LEXIS 180, *31-*32, *37-*39 (T.T.A.B. 2004)

…the parties to these proceedings have each proffered a survey…on the question of genericness…

…petitioner points to a…survey [which] targeted individuals who had consulted a real estate agent in the past year or were planning to do so in the coming year, or were planning to buy, sell or rent real estate in the next year. Of the ninety-six individuals surveyed, only ten percent said that “Realtor” was a brand name.

By contrast, respondent’s telephone survey targeted real estate brokers and agents. Respondent argues that real estate professionals make up the proper survey universe, as they are actually the purchasers or prospective purchasers of membership in respondent and the services provided by respondent…

… Accordingly, given…the deficiencies of petitioner’s survey, we accord it

very little weight on the question of whether prospective purchasers of a real estate professional's service would view the term “Realtor” as indicating the services were being offered by a real estate association member (even if the association were unknown).

… We need not agree with respondent that real estate professionals are the

sole group with whose perceptions we should be concerned in order to accord substantial weight to the results of the [Respondent’s expert’s] survey. For given the circumstances of the use of these collective service marks, we agree with respondent's fallback position that real estate professionals make up a significant subgroup of relevant consumers…

Ty, Inc. v. Softbelly’s, Inc., 353 F.3d 528, 530-531 (7th Cir. 2003)

…A survey by [Plaintiff’s expert]…found that 60 percent of the respondents thought “Beanies” [was] a brand name…If 60 percent of the relevant consuming public thinks “Beanies” [is] a brand name, as many of 40 percent may think it generic…the legal test of genericness is “primary significance,”…and [Plaintiff’s expert’s] results are evidence that the primary significance of “Beanies” is still as the name of [Plaintiff’s] brand.

…A linguist testified that 98 percent of the references in news articles to the word “Beanie” were to [Plaintiff’s] products and that dictionaries do not list it as a generic (lower-case) word.

…A statistician sampled eBay and Yahoo auctions and found that more than 80 percent of all references to “beanie(s)” were to [Plaintiff’s] products.

…In a phone survey conducted in 1999, more than 60 percent of the respondents identified “Beanies” as relating to [Plaintiff] or Beanie Babies…

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Arrow Trading Co., Inc. v. Victorinox A.G., 2003 T.T.A.B. LEXIS 310, *44-*45 (T.T.A.B. 2003) This disposition is not citable as a precedent of the T.T.A.B.

Applicants…have submitted convincing evidence that SWISS ARMY is [a] trademark…This…includes…the results of the telephone survey…conducted in 1997 to determine whether the term “Swiss Army” was perceived as a generic name or as a brand designation. The findings from the survey were: (1) of a cross-section of potential purchasers, 81% considered “Swiss Army” to be a brand name, not a common name; and (2) most consumers (92%) associated “Swiss Army” with knives or pocketknives, although 16% believed there was some association between the “Swiss Army” name and watches.

[The] survey utilized the generally approved “Teflon Methodology.” It involved men and women, ages 18 and older, who indicated an intention to purchase a pocketknife in the next six months…[Respondents] were asked a series of questions, including whether they thought “Margarine,” “Aspirin,” “Cellophane,” “Easy Spirit,” “Swiss Army,” “M & M,” and “Sony” were common names or brand names…

Opposer thoroughly cross-examined applicant’s survey expert witness regarding the type of survey, the interviewing, the analysis, etc…it is noteworthy that opposer did not retain a survey expert to critique applicants’ survey, and did not conduct its own survey (or elected not to submit such testimony or survey results)…

We have carefully considered the entire testimony…and we find no reason to discount [the] survey…

Big Island Candies, Inc. v. The Cookie Corner, 269 F. Supp. 2d 1236, 1250-1251 (D. Haw. 2003)

In the [Plaintiff’s survey], respondents were first shown a picture of a BIC Cookie wrapped in cellophane printed with the word “Big Island Candies.” They were then asked if they had seen the BIC Cookie before. If they stated that they had, they were asked, “Who makes this product?” In response to that question, 16.9% to 29.4% of respondents answered “BIC.”…

It is true that relevant survey data or statistics of some sort might assist this court…As [Plaintiff] contends, “the most important type of evidence used in evaluating genericness is consumer surveys.”…

Unfortunately…the [Plaintiff’s] Survey is of no help to it on the present motion. First, the [Plaintiff’s] Survey does not test for genericness. The survey asked the “Who are you?” question. That method cannot possibly test whether respondents view the BIC Cookie as answering the question “Who are you?” (rather than answering the question “What are you?”). The question is not which source consumers most often associate with the BIC Cookie, but whether the BIC Cookie design's primary significance to the consumer is that of source identification…

Second, no attempt was made to test consumers’ perceptions of the BIC Cookie design rather than the BIC Cookie packaging (or the combination of the

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BIC Cookie design and packaging). Survey respondents were never shown a plain BIC Cookie. Rather, the only way in which respondents saw the BIC Cookie was when it was wrapped in cellophane printed with the words “Big Island Candies.”…

Finally, the court notes that [Plaintiff] misunderstands what percentage of respondents must respond in a certain way to establish nongenericness… [Plaintiff] suggests that, if more than 15% of survey respondents identified [Plaintiff] after viewing the BIC Cookie, that percentage was “sufficient to support a summary judgment finding of distinctiveness, so it is more than sufficient to show that the dress is not generic.”…That argument is incorrect because (1) the type of survey used to test for genericness differs from the type of survey used to test for distinctiveness, and (2) for a genericness survey, “majority usage controls.”…For a term to be held nongeneric, the seller must prove that the “primary significance of the term in the minds of the consuming public is not the product but the producer.”…

Interstate Net Bank v. Netbank Inc. and Netbank, 221 F. Supp. 2d 513, 526 (D. N.J. 2002)

Defendant has also provided a report…which determined that the term “NetBank” is not considered generic after surveying 400 random internet users and asking them certain questions regarding phrases that describe banking services…

In this case, the…survey asked, in relevant part:

1. Are you aware of a banking service that allows you to pay some or all of your bills by using your computer to communicate with your bank?

2. If you were to describe this process to a friend, what words or phrases would come to mind first? That is, what would you call this process?

…[Defendants’] report indicated that no one responded with the term “net bank” to describe the process of paying bills by using a computer. …the…Court finds that by posing such survey questions, Defendants attempt to confuse the separate industries or services of online banking and online bill payment. Both online bill payment and banking services are combined in the question, Defendants having initially occupied the capacity of an online bill payment company while seeking to assert its mark over Plaintiff in the field of banking services provided via the global computer network…the issue is whether “net bank” is generic for online banking services, for which Defendants seek to expand their trademark protection, not online bill payment services using electronic coupons, for which the mark was registered. Defendants’…questions…fail[ed] to reach the heart of the issue, which is whether the “net bank” term has reached genericness in the field of banking services provided via the global computer network…

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Microsoft Corp. v. Lindows.com, Inc., 2002 U.S. Dist. LEXIS 24616, *28, *39-*42 (W.D. Wash. 2002)

…Here, [Defendant] has presented evidence in five of the six categories, omitting only consumer surveys, to support its claim that the Windows trademark is generic.

… The Court first turns to the evidence submitted by [Plaintiff] consisting

primarily of several consumer surveys that show a high degree of recognition of the Windows brand among the consuming public…The Ninth Circuit has emphasized that a trial court may consider factors such as “survey design, nature of the questions asked, and the experience and reputation of the surveyor” in determining the weight to accord a survey…

In support of its [m]otion…[Plaintiff] submitted the Declaration of…the current Director of Branding…The first survey mentioned was conducted for [Plaintiff] in 1999 and shows that 93% of personal computer users recognized the Windows brand…No exhibits are attached to demonstrate the methodology or explain the survey design, and without such a foundation, the Court has no alternative but to ascribe a bare minimum of weight to the result. The next survey [offered in the declaration of the Director of Branding] was conducted…[among] “on-line” consumers in early 2001 and concluded that Windows was the No. 1 brand overall and No. 3 in distinctiveness…The Declaration attaches a copy of the…survey results which displays the top twenty “Marks of Distinction” in ten countries…Based on the one page exhibit, it is impossible for the Court to analyze the…assertion that “Windows ranked No. 1 overall” because the submitted evidence lacks meaningful information about survey methodology….the Court finds it to be of little probative value in showing that Windows is a protectable trademark. The final survey [offered in the declaration of the Director of Branding] showed that “in the United States, almost 80% of the general public is aware of the Window (sic) brand.”…The Court therefore declines to give any substantial weight to this survey, or the others described in the [declaration of the Plaintiff’s Director of Branding].

Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926, 934 (M.D. Tenn. 2001)

[Plaintiff] has also commissioned a survey [where]…[r]espondents were interviewed in three shopping malls in three states between the geographical sites of the litigants, with 210 total interviews conducted…The survey was designed to investigate the issue of whether the existence of the alphanumeric telephone number, 1-800-THE OPRY, would convey the impression of an association with a particular company, namely “Grand Ole Opry,” or whether it referred to country music generally…

The survey indicated that 45.7% of the overall population associates the number with a particular company, namely the “Grand Ole Opry.”…Within the population of respondents who listen to country music, the relevant market, 60%

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associated 1-800-THE OPRY with a particular company, specifically the Grand Ole Opry in Nashville, TN…

The survey results clearly support the conclusion that the general population, and the specific target market of country music listeners, expects an 800 number, 1-800-The Opry, to be associated with [a] particular company, specifically the Grand Ole Opry in Nashville, TN, and any other company utilizing the 800 number, 1-800-The Opry, would be misleading to the general population and the specific target market of country music listeners. The results reject any proposition that The Opry refers to country music generally or to a variety of country music shows.

March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc. and Sports Marketing Int’l, Inc., 162 F. Supp. 2d 560, 570, 572 (N.D. Tex. 2001)

Finally, the depositions of both parties’ experts raise genuine issues of material fact regarding the genericness of March Madness.…In addition, Plaintiff’s expert…opined in his sworn declaration that “the primary significance of March Madness is a trademark that identifies a specific basketball-related sports event sponsored by a single source.”…the survey conducted by [Plaintiff] demonstrated that 61 percent of eligible consumers recognized March Madness as a trade name, as opposed to a common name…

… The [Plaintiff’s] survey, discussed above, also raises questions about the

protectability of March Madness. Just as the 61 percent figure might convince a juror that March Madness is not generic, the same figure could lead a juror to believe that [March Madness Athletic Association] does not hold a protected mark in the phrase. This conclusion becomes more likely when comparing the 61 percent result for March Madness with the 92 and 93 percent results for the terms “Kentucky Derby” and “Stanley Cup.” In addition, the fact that the survey did not ask which brand the participants associated with March Madness could lead a fact-finder to discount its results.

In re Callaway Golf Co., 2001 T.T.A.B. LEXIS 599, *10-*18 (T.T.A.B. 2001) This disposition is not citable as precedent of the T.T.A.B.

The respondent was then asked the following: “Now, for each of the following ten names, would you please tell me whether you understand the name to be a common name or a brand name?” The list was read randomly…[STP, Windsurfer, Margarine, Teflon, Jell-O, Refrigerator, Aspirin, Coke, American Airlines, Gas Station]. [Subsequently] the respondent was asked: “With respect to golf, for each of the following names, would you please tell me whether you understand the name to be a common name or a brand name?”…[n6 This follow-up question presents a twist on a typical “Teflon Survey.” In this connection, we take judicial notice of the dictionary definition of the term “steelhead”: “a large-sized silvery anadromous rainbow trout.” Webster’s New International Dictionary (unabridged ed. 1993) Given the fact that “steelhead” is a name of a fish, some

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respondents may well have classified the term as a common name if the term appeared in the first list of terms. By way of example, the same likely would be true of the term “Arrow.” Although the term is a common name (as in “bow and arrow”), it is also a brand name as applied to shirts. Thus, inasmuch as “steelhead” is a dictionary term, we see no problem with the follow-up question that directs the respondents’ attention to the significance of “Steelhead” as it pertains to golf.] [Steelhead, Footjoy, Graphite]

… The issues on appeal are whether the term STEELHEAD is merely descriptive or generic for applicant’s golf clubs and, alternatively, if such term is not generic but rather merely descriptive, whether it has acquired distinctiveness... We turn first to the issues of whether the term STEELHEAD is generic, or whether it is just merely descriptive, when used on golf clubs…The United States Patent and Trademark Office has the burden of establishing by clear evidence that a mark is generic and thus unregistrable…Evidence of the relevant public’s understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications…

… We next turn to the second step of the…inquiry, that is, whether the

relevant public understands the term STEELHEAD to refer primarily to the type or category of goods…

… The Examining Attorney provided dictionary definitions of the words

“steel” and “clubhead,” as well as examples of generic uses by the media…the survey, which shows results that are pretty evenly divided, establishes that it is not clear cut as to whether the relevant public views STEELHEAD as a brand name or a generic term.

… Of considerable significance in the present case is the survey. As in the

original “Teflon Survey,” the respondents in applicant’s survey were quite good at sorting out brand names from common names. Although the Examining Attorney is technically correct in viewing the survey results relating to STEELHEAD as a statistical tie (taking into account the precision variance), the simple fact is that a substantial part (over 48%) of the relevant purchasing public view the term STEELHEAD as a trademark, and not as a generic name. The survey by itself raises a doubt regarding genericness, and any doubt in determining registrability is resolved in favor of applicant…

Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251, 254-255 (4th Cir. 2001)

In support of its argument that “crab house” is not generic, [Plaintiff] offers a survey conducted of consumers in the Charleston area. [Plaintiff] asserts that the district court erred in failing to consider its survey evidence in assessing genericness…However, [Plaintiff] fails to recognize that there are two distinct ways in which terms may be classified as generic: (1) where the term began life as

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a “coined term”; and (2) where the term was commonly used prior to its association with the products at issue…The notion that whether a word is generic depends upon consumers’ understanding of the word is based upon a scenario involving a coined word for a commercial product (such as “aspirin,” “teflon,” or “thermos”) that is alleged to have become generic through common usage…[Plaintiff] does not claim to have first coined the term “crab house.” Therefore, it is not necessary to determine whether the term has become generic through common use, rendering [Plaintiff’s] customer survey irrelevant.

Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832, 840 (9th Cir. 2001)

…[Defendant] submitted excerpts from a consumer survey purportedly showing forty-four percent consumer awareness of the term “Fire-Safe.”…the district court noted that the survey excerpts do not indicate whether the consumers were asked to identify the term “firesafe” as a brand name or a common name, a critical issue in a case involving genericness. Simply asserting consumer awareness of the term begs the question. Nor did the submission address the format of the survey or its methodology. Without any information regarding the survey design, questions, or methodology, the district court did not abuse its discretion by ascribing little weight…

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DESCRIPTIVENESS/SUGGESTIVENESS SURVEYS In re Indian Industries, Inc., 2004 T.T.A.B. LEXIS 621, *9-*10, n.2 (T.T.A.B. 2004) This disposition is not citable as a precedent of the T.T.A.B.

…while the Trademark Examining Attorney herein has successfully made out a prima facie case for MOSCONI being primarily merely a surname, we find that the present applicant has successfully rebutted this case with its showing. The record is replete with references to the legendary Willie Mosconi as being so famous at billiards during the last fifty years of his life that his name is synonymous with the game. In a survey of members of the relevant purchasing public [n2 Heads of households who were interested in sports, had household incomes of $50,000 per year or higher, who had purchased a pool table or intended to do so within the next five years…]…at least 21% of the respondents associated Willie Mosconi with the game of pool…It is this showing that demonstrates that MOSCONI would be viewed by the relevant purchasing public as a reference to Willie Mosconi when used in connection with applicant’s goods. This effectively rebuts the prima facie showing made by the Trademark Examining Attorney herein.

Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 2004 U.S. Dist. LEXIS 19278, *9, *16-*17 (D. Vt. 2004)

…[Plaintiff] offered a survey…designed to test whether “PocketMoney” is a descriptive or a suggestive mark…[Plaintiff’s expert] selected as its universe…all individuals aged eighteen or older…[Plaintiff’s expert] assumed that many individuals could be within the class of potential consumers of PDA products even if they were not currently aware of this…

… The survey conducted by [Plaintiff’s expert] also provides some support

for the conclusion that “PocketMoney” is suggestive. The survey does not provide strong evidence because it sampled the views of the general public rather than those known to be likely to purchase software for PDAs…Thus, the survey provides a small amount of additional evidence that Catamount's mark is suggestive.

J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358, 366, 370-372 (D. N.J. 2002)

[Plaintiff] offers [a] market survey…as evidence that the [BREAK & BAKE] mark should be classified as “suggestive” (and thus protected) instead of “generic”…[Plaintiff’s expert] has proffered his opinion, based on the results of his survey conducted on the BREAK & BAKE mark, that respondents found the mark to be suggestive, not merely descriptive…

… In this case, the [Plaintiff’s] survey suffers from two substantial

flaws…The first, and perhaps clearest, flaw is the uncontroverted definitional problems of the survey…The survey was submitted to show the mark should be

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classified as “suggestive” instead of “generic” or “descriptive,” but it did not properly define any of the classifications. Because the classifications were not properly defined, the survey has no bearing on the issue it was submitted for.

…This Court had previously discussed in detail and with numerous citations to case law the proper definition of a descriptive term…Specifically, this Court explained that “descriptive marks describe the purpose, function or use of the product, a desirable characteristic of the product, or the nature of the product.”…Yet, the [Plaintiff’s expert’s] definition includes nothing that refers in any way to the correct, recognized and binding definition of a descriptive term under trademark law…

…As a result, the flawed definition permeated the entire survey to make its finding completely untrustworthy and unreliable…

… The second flaw in the survey is that the universe chosen for the survey

was improper… …It is undisputed that [Plaintiff] sells all of its frozen cookie dough

product with the “BREAK & BAKE” mark through its food service distributors to distributors who offer the product to fund raising organizations…As a result…[Plaintiff’s] study should have been limited to the commercial distributors in the food service industry who may have contact with frozen dough products…Instead, the universe here consisted of adults shopping at one of four malls in the United States who either “do at least some of the grocery shopping for their household,”…or “have purchased refrigerated cookie dough in the past and/or intend to purchase refrigerated cookie dough in the future,”…This universe renders the study unreliable as it ignores the fact that the ultimate consumer does not have any contact with the “BREAK & BAKE” mark on [Plaintiff’s] product. In addition, it only concerns the views of ultimate consumers who purchase or may purchase refrigerated dough when [Plaintiff’s] product is unquestionably frozen.

The improper sampling universe is further compounded by the survey’s design flaw of failing to disclose to respondents the context of the product with which the mark is connected. The [Plaintiff’s] survey instead asked shopping mall customers to guess about this context. Again, such a survey misses the mark where descriptiveness is sought to be ruled out. This is true because the survey must supply to “the hypothetical potential customer” the “amount of basic knowledge about the product that most people would have from news and advertising.”

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SECONDARY MEANING SURVEYS

General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711, *25 (D. Utah 2010)

...For nearly the same reasons that the dress is famous, it also has acquired distinctiveness. The [Hummer] trade dress has been used for over twenty years and has been actively promoted in connection with the Hummer product line. Moreover, [Plaintiff] has marketed the Hummer H1 on television, in print, online, and at events and has spent several hundreds of millions of dollars doing so. Finally, [Plaintiff’s expert’s] survey indicates a rate of actual confusion of over 50 percent which supports the inference that the mark has acquired secondary meaning.

1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132389, *63-*65 (D. Utah 2010)

...Plaintiff also has presented evidence from a consumer awareness survey. A question on the survey asks respondents: “Which companies have you ever seen or heard of that sell contact lenses by phone, mail, or on the Internet?...The first answer by a respondent is recorded...The respondent is then asked to name other companies that sell contact lenses by phone, mail, or on the Internet...In 2008, forty percent of the respondents who wore contact lenses mentioned Plaintiff first. In contrast, only about one percent of respondents listed the next closest competitor...

While the survey provides evidence that the name “1800Contacts” has marketplace recognition, it is not without its flaws. Because the survey questions asked about “phone,” “mail,” and “Internet” together, the survey does not disclose how many respondents recognize Plaintiff as a[n] Internet retailer...Consequently, the degree of recognition that Plaintiff has obtained on the Internet versus other marketing channels is unknowable from the survey... A second problem with the survey results from how questions were asked versus how they were recorded. The survey asked an open-ended question about which companies a respondent had heard sold contacts by phone, mail, or the Internet. Yet, the person recording the answer had to fit the answer into a category from a close-ended list...Since the survey was not double-blind, this survey design may have led to unintended interviewer bias...Respondents do not always provide a clear and precise answer. Instead, people may “say, oh, I don't know, it’s a 1-800 number, or they say, oh it’s got—you know, it’s contact something.”...Because these answers do not fit cleanly within the close-ended list of possible responses, an interviewer, in a non-double blind study, may be more apt to record it as the desired answer of “1800Contacts.”...This weakness in the survey design lessens its probative value.

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Moreover, the survey results are somewhat marginal. Courts have found that consumer awareness exceeding fifty percent provides good evidence while “a recognition figure of thirty-eight percent” provides only marginal evidence...

Carl Walther Gmbh, In re, 2010 TTAB LEXIS 410, *9-*12 (T.T.A.B. 2010) This opinion is not a precedent of the T.T.A.B.

Applicant’s direct evidence that the PPK handgun design has acquired distinctiveness primarily consists of a consumer recognition survey...Applicant commissioned a blind, online survey of individuals (over 18 years old) who “own a handgun or plan on purchasing a handgun in the near future” and have not previously worked for a gun manufacturer. The eligible individuals were instructed “we are going to show you four different images of pistol shapes and then ask you to respond to some questions about each pistol shape.” The participants were then shown the images and asked whether or not they were able to identify each pistol “based on (their) shape(s)” and, if so, to identify the ‘company or companies that make a pistol with this shape.’ Applicant’s PPK handgun design was among three other handguns from various manufacture[r]s shown to the survey participants...Approximately 54% of the participants who completed the survey stated that they were able to identify who makes applicant’s PPK pistol based on the shape of the pistol; and 33% of survey participants correctly identified applicant, or its licensee, as the maker. That is, over half of the survey participants associated PPK handgun design with a single source and approximately one-third of the participants were able to correctly identify the source. These percentages are not out of line with previous cases where secondary meaning or acquired distinctiveness in a mark has been established...We do not find these survey results, alone, to be conclusive in establishing that the PPK handgun design has acquired distinctiveness; rather, the survey is one piece of persuasive evidence that is considered in conjunction with the entire record before us. ...We also disagree with the examining attorney’s reasoning that the survey is flawed because the participants were subscribers to publications in the field of handguns. The examining attorney asserts that “by only surveying consumers with extensive knowledge of handguns, the applicant has not shown that the public recognizes that (the PPK handgun design) identifies the source of the goods.”...First, applicant need only show that the mark has become distinctive as a source identifier in the minds of consumers or prospective consumers of handguns, and not the “public” at large...

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Cartier N.W., In re, 2010 TTAB LEXIS 337, *4-*5 (T.T.A.B. 2010) This opinion is not a precedent of the T.T.A.B.

Applicant submitted evidence into this record of a consumer survey taken in the course of another litigation involving a knock-off watch design that incorporated all the protectable elements of the Pasha Chronograph...In order to test the level of consumer confusion as to that infringing watch, applicant commissioned a survey...This survey’s use of “look-alike” watches to determine levels of acquired distinctiveness has been explicitly approved by our primary reviewing Court...A high percentage of respondents erroneously identified the knock-off watch as coming from Cartier. We find this to be powerful evidence that this overall configuration has acquired distinctiveness. The survey properly focused on the totality of the watch design. On this point, we disagree with the Trademark Examining Attorney's position that such a survey is not probative of acquired distinitiveness [sic] if it fails to inquire about respondents' recognition of specific “features” of the watch at issue.

Honestech, Inc. v. Sonic Solutions, 725 F. Supp. 2d 573, 580 (W.D. Ttex. 2010)

In short, the Court finds the evidence of secondary meaning presented at trial would likely not have been sufficient to establish secondary meaning even without [Defendant’s expert’s] survey evidence to rebut it...This conclusion is further buttressed by the fact that [Plaintiff] presented no evidence involving an objective survey of the public's perception of its name, although the Fifth Circuit places considerable weight on such evidence...

Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360, 1373-1374 (N.D. Ga. 2010)

Defendant asserts that the Survey is not reliable because the universe of respondents was not properly defined. Here, the sampling universe was Defendants’ list of referring doctors provided by Defendants in discovery. Plaintiff states that the general allergy suffering public was not used because Defendants receive 85% of their patients from referrals from other doctors, and Defendants direct virtually all of their marketing toward other doctors to increase their referrals. Plaintiff contends that by focusing only on Defendants’ referring doctors, any bias in the Survey was in favor of Defendants and the results likely under-represent the true level of Plaintiff's secondary meaning in the market.

... The Court does not find that Plaintiff’s Survey universe is fatally flawed. At issue is the question of whether Plaintiff’s mark had become associated with Plaintiff’s services in the mind of the consuming public. Plaintiff argues that the relevant “consuming public” is the population of

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physicians that actually refer patients to medical specialists such as Plaintiff and Defendants. Defendants have not provided any authority holding that defining the consuming public in this manner is inherently flawed or necessarily produces an unreliable result. Indeed, the law appears contrary to Defendants’ position. When “the relevant market includes both distributors and ultimate purchasers, the state of mind of dealers is important in determining if secondary meaning exists. While the fact that no ultimate consumers were surveyed may be relevant in determining the weight the survey should be given by the finder of fact, it does not render the . . . survey meaningless for determining if secondary meaning exists.”...

While Defendants may argue that a survey of a broader universe may have produced different and more informative results, such argument goes to the weight Plaintiff’s survey deserves, not to its admissibility. The Court is persuaded that Plaintiff’s Survey is probative of the question of whether Plaintiff’s name acquired secondary meaning.

Fair Isaac Corp. v. Experian Information Solutions Inc., 645 F. Supp. 2d 734, 759 (D. Minn. 2009)

…Although direct evidence such as consumer testimony or surveys is most probative, secondary meaning can also be proven through circumstantial evidence, such as “the exclusivity, length and manner of use of the mark; the amount and manner of advertising; the amount of sales and number of customers; the plaintiff’s established place in the market; and the existence of intentional copying.”…

Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458, *17 n.3 (S.D.N.Y. 2009)

[Defendant] has moved to preclude [Plaintiff’s expert’s] survey and report…[Defendant] argues that, because SEXY HAIR is the subject of an incontestable registration, it cannot be challenged as a matter of law on the grounds that it is descriptive. This is wrong; as discussed below, the issue here is not a challenge to any of [Defendant’s] trademarks, but rather whether the word “sexy” can be regarded as the surname of [Defendant’s] purported family of marks. [Plaintiff’s expert’s] survey is relevant because, in order for [Defendant] to establish that it owns a family of marks using the word “sexy,” it must demonstrate that consumers perceive the word “sexy” to be an indication of the source of the hair care product…

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Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 2009 T.T.A.B. LEXIS 132, *53-*54, *56-*57, *59-*60, *61 n.45 (T.T.A.B. 2009)

Applicant’s expert witness…performed a [secondary meaning] survey…

… The survey was conducted in four different geographic locations in Houston, Texas (Evans Music City and Bellaire Music), Chicago, Illinois (Guitar Center and American Music), Philadelphia, Pennsylvania (Medley Music), and Portland, Oregon (Guitar Center)…The relevant population was defined as “persons who own or plan to own an electric guitar.” The survey was conducted in front of the display windows of six different retail musical instrument stores. Potential participants were selected outside these stores and asked if they own or plan to own an electric guitar and, if so, if they would be willing to participate in a “national survey” for a “national maker of guitars.” Respondents were then asked a qualifying question as to their level of guitar-playing skill. Those who answered that they do not play the electric guitar were eliminated…

… We find the inability to review…the verbatim responses lessens the probative value of the survey report’s conclusions… In addition, the probative value of the survey is weakened inasmuch as it was conducted with the interviewees facing the display windows of stores selling electric guitars, two of which (Guitar Center stores) are known to carry a significant number of applicant’s guitars… The probative value of the survey is further weakened by the exclusion of an entire segment of the relevant population, those who own or want to own an electric guitar but do not play…

… We further note other more subtle biases in the survey presentation…“by saying national maker of guitars”… …given applicant’s market share, it “is not surprising” that interviewees could recall that applicant makes guitars with these body shapes “in light of applicant’s sales and advertising, its market share and the length of time that it has sold” guitars. [n.45 This problem is illustrated by the 32% false positive responses as to the imaginary shape. Thirty-two percent of respondents believed an imaginary shape came from applicant…Thus, when we subtract the positive results of the control shape from the positive results on the target shapes the results are much lower…]

Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277, *5-*7 (2d Cir. 2008)

As to consumer studies, [Plaintiff] submitted a survey…conducted to determine whether the Tank Francaise had achieved a secondary meaning; the survey had been conducted in the course of [Plaintiff’s]

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litigation of a different case…The…survey indicated that there was a 60% recognition rate among relevant consumers for identifying the Tank Francaise with a single source. The district court appropriately found that this survey also mitigated in favor of finding that the Tank Francaise had acquired a secondary meaning… To support their argument relating to attempts to plagiarize the mark, plaintiffs produced evidence that there are many different Tank Francaise knockoffs or lookalikes being sold by various merchants. That there are a number of merchants who use the words “Cartier style” and “Tank style” or even “Tank Francaise” supports the plaintiffs’ argument that Tank Francaise has acquired secondary meaning. The district court’s conclusion on this factor was not clearly erroneous…

E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585, *29, *32-*33, *36 (3rd Cir. 2008)

…Even assuming that [Plaintiff] prevailed and proved “Cocoa Butter Formula” to be descriptive, it also would need to show that the term had acquired secondary meaning which associates it with [Plaintiff]. [Defendant] moved for summary judgment on the basis that Browne had not produced evidence creating a genuine issue of material fact on the secondary meaning question…

* The evidence’s core deficiency is that while it shows [Plaintiff] used the term “Cocoa Butter Formula” on many occasions over a long period of time, it does not show [Plaintiff] succeeded in creating secondary meaning in the minds of consumers. Although the evidence leaves no doubt that [Plaintiff] hoped the term would acquire secondary meaning, nothing shows that it achieved this goal. Jurors would have to make a leap of faith to conclude that the term gained secondary meaning because the record fails to provide meaningful support. A jury could evaluate the quality of the advertising or consider this rise in product sales, but it would have to guess what lasting impression the advertising left in the mind of consumers or what portion of [Plaintiff’s] revenue growth it caused.

* [Plaintiff] could have overcome these deficiencies in its evidence by conducting a secondary meaning survey…It could have used survey evidence to show that “Cocoa Butter Formula” had acquired secondary meaning in the minds of consumers, thus creating a genuine issue of material fact on that issue…We never have held, and do not hold today, that a party seeking to establish secondary meaning must submit a survey on that point. However, [Plaintiff’s] failure to conduct a secondary meaning survey leaves it without evidence of any sort in this case of the secondary meaning of the term “Cocoa Butter Formula.”

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Citizens Banking Corp. v. Citizens Financial Group, Inc.¸ 2008 U.S. Dist. LEXIS 36800, *10-*11, *12 & n.1, *13-*14, (E.D. Mich. 2008)

Plaintiff cites its duration using the term in Michigan, the amount of money spent on advertising, as well as the results of a secondary meaning study conducted by its expert witness…Plaintiff concludes that it has established secondary meaning, and that its mark therefore deserves strong protection. The Court disagrees.

* …[Plaintiff’s expert’s] studies [do not] establish secondary meaning. The studies investigated whether respondents associated the word “Citizens” in the banking industry with one or more companies, or no company at all. In his first study of twelve counties in Michigan, fifty-two percent (240 out of 473) of respondents indicated they associated “one company” with the term. The study followed up with “unaided recall” questions, which asked the “one company” respondents for addresses, logos, or other advertising cues to determine which company they associated with “Citizens.” At most eight per cent answered in a manner that suggested the Plaintiff was the one company…[n.1 Defendants challenge [Plaintiff’s expert’s] total number of “un-aided recall” respondents who identified Plaintiff as the single source. [Plaintiff’s expert] apologized on the stand for “missed verifications” of banks outside the counties at issue, some of which referred to banks even outside Michigan, but acknowledged he did not correct those entries in a subsequent supplemental report.] [Plaintiff’s expert] did a second analysis of the data, of respondents from the nine-county area where Plaintiff is the only “Citizens”-named bank. The percentage responding that they associated one company was statistically the same. The second study did not seek to determine which companies were in respondents’ minds as the “single source.” Plaintiff argues that because it is the only “Citizens”-named bank in that nine county area, one must logically conclude that it was the “single source” in respondents’ minds… The Court is not persuaded, because the data is simply inconclusive…

* In addition, the [second] study followed a time period in which Plaintiff had invested significant funds and efforts to become established, especially in Oakland County, whose inhabitants represented one-third of the second analysis’s respondents. The fact that the numbers were statistically the same between the two analyses indicates that awareness of Plaintiff’s mark is weak. …the eight percent attribution to Plaintiff is insufficient to demonstrate secondary meaning…

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Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478, *29-*30, *34 (E.D.N.Y. 2008)

…A court considering secondary meaning should take into account six factors that bear on the extent to which the “consuming public for a particular product” associates that product with its source on the basis of its trade dress: “(1) advertising expenditures, (2) consumer studies linking the mark to a source, (3) unsolicited media coverage of the product, (4) sales success, (5) attempts to plagiarize the mark, and (6) length and exclusivity of the mark’s use.”…This is an “essentially factual determination, proof of which entails vigorous evidentiary requirements.”… In seeking to establish secondary meaning, [Defendant] focused its efforts almost exclusively on the second factor listed above. Such consumer surveys are a probative source of evidence as to secondary meaning, but they are not conclusive…

* [The survey results] persuasively demonstrate that some people reliably recognize two dominant features and attribute them to [Defendant]. But the data do not go further to persuade me…that the combination of six features for which [Defendant] seeks protection has acquired a secondary meaning. The latter proposition may be more difficult to establish by means of a consumer survey, but such difficulty does not relieve [Defendant] of its burden of persuasion…Nor does it do anything to undermine the availability of other sources of proof -- including such things as advertising expenditures, and unsolicited media coverage of the product -- that [Defendant] could have sought to adduce but did not.

Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242, *6-*7 (S.D.N.Y. 2008)

…[Plaintiff] relies on a survey…to support its contention that [its color mark] has acquired secondary meaning. It asserts that 54.6% of consumers in the study named NEOSPORIN (R) as a source of the product sold in a box bearing only [its color mark]. But only 34% of consumers in the study named NEOSPORIN (R) as the only ointment sold in a package like the one they were shown. This percentage fell to 32% when the results from the control group were considered…Taken as a whole, while [Plaintiff’s] evidence of secondary meaning is sufficient for a jury to conclude that [its color mark] has acquired distinctiveness in the marketplace, it is insufficient to establish secondary meaning as a matter of law.

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Saint-Gobain Corp. v. 3M Co., 2007 T.T.A.B. LEXIS 82, *45-*46, *50, *52 (T.T.A.B. 2007) (This opinion is a precedent of the T.T.A.B.)

Opposer also introduced a survey to support its position that applicant's mark had not acquired distinctiveness… [Opposer’s expert] conducted a survey that involved telephonically contacting users of abrasives. The survey also involved a control. A control is “a twin product attribute, service or stimuli that has the same characteristics generally as the test stimuli, but does not have the characteristic that is at issue... it would have all of the characteristics of purple sandpaper but not be purple.”… As a result of the survey, [Opposer’s expert] concluded that “when one measures how many people would identify [Applicant] or one company, even if an unknown company, as a single source of purple sandpaper, and you then subtract the similar proportion among people who are asked about orange sandpaper in the control, you end up with six percent…

* Regarding the objection that a telephone survey should be virtually meaningless, we ultimately agree with opposer that, despite our initial misgivings, a telephone survey involving a color, at least under the facts of this case, is not inherently unreliable. To the extent that opposer’s survey is subject to criticism, it could also be criticized as erring on the side of over-inclusion, because any customer who saw any shade of the color purple as indicating a single source for coated abrasives would have responded affirmatively…

* Overall, we find that the survey, despite some unusual features, is probative and we will accord it some weight on the question of acquired distinctiveness…

Walker & Zanger, Inc. v. Paragon Industries, Inc., 2007 U.S. Dist. LEXIS 35520, *24-*26 (N.D. Cal. 2006)

Here, plaintiff’s survey performed by [Plaintiff’s expert] found that 36% of interior designers in the six states where the parties compete, and 25% of interior designers interviewed nationwide, recognized either all or some of plaintiff’s tiles as being produced by a specific company known to them…Defendant criticizes [Plaintiff’s expert] for utilizing an underinclusive test group; that is, the survey sampled interior designers, yet plaintiff’s customers include builders, design centers, architects, contractors and end users (i.e., home owners or purchasers and retail customers)…

The court agrees with defendant that the limited survey population reduces its probative value, but the court declines to rule the survey inadmissible…

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plaintiff’s Rule 30(b)(6) witness concedes that interior designers are not “retail” or “average” customers, as they hold specialized knowledge of the tile industry…Due to these shortcomings, the court assumes that, if the survey had included a proportionate sampling of all customers, the percentage of respondents identifying the tile design would be lower. See Yankee Candle, 259 F3d at n14 (noting that opinions of retailers and those active in the field not evidence of views of the consuming public). Indeed, plaintiff’s survey undercuts its argument for secondary meaning: the survey suggests that over three quarters of the most sophisticated purchasers do not recognize plaintiff’s tiles as being produced by a specific company.

Bay State Savings Bank v. Baystate Financial Services, LLC, 2007 U.S. Dist. LEXIS 27148, *30-*32 (D. Mass. 2007)

The [Plaintiff’s] survey is insufficient to establish secondary meaning…First, the survey--which was conducted in 2005-06--is irrelevant to the issue of whether plaintiff’s marks had acquired secondary meaning as of 1997…Second, the survey did not evaluate whether respondents associated the name “Bay State” with institutions providing investment or insurance services…Instead, it asked only if respondents associated the words “Bay State” with a “financial institution or institutions in the Worcester area.” Thus, at best, the survey demonstrates that a portion of respondents associated the words “Bay State” with “Bay State Savings Bank.” Finally, the number of respondents who associated the name “Bay State” with plaintiff was not high enough to prove secondary meaning. Courts typically view survey evidence indicating that 50% or more of the consuming public associate a mark with the company’s products as sufficient to demonstrate secondary meaning…

Imig, Inc. v. Electrolux Home Care Products, Ltd., 2007 U.S. Dist. LEXIS 20530, *26-*27 (E.D.N.Y. 2007)

[Defendant] has submitted a survey of 157 participants to support its claim that the configuration of six features serves the function of identifying the source of the Sanitaires and thus possesses secondary meaning…Of the 157 participants in [Defendant’s] survey, 118 identified one or more of the six relevant features as signifying that the vacuum cleaner was a Sanitaire -- none identified all six, let alone the particular configuration of all six features…In fact, some two-thirds of those 118 participants cited the “red color” as the reason for identifying the vacuum cleaner as a Sanitaire…No probative weight can attach to a survey that does not demonstrate the symbolic function of the product design, overall, with respect to the source of the product. This survey falls well short of providing sufficient evidence on which to conclude that the design of the Sanitaires has secondary meaning as a matter of law...

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Vital Pharmaceuticals, Inc. v. American Body Building Products, LLC, 2007 U.S. Dist. LEXIS 3659, *20 (S.D. Fla. 2007)

Appeals courts have held that survey evidence “is the most direct and persuasive evidence” to establish secondary meaning…[Plaintiff] presented no survey evidence at trial indicating that its Redline product had acquired secondary meaning in the minds of consumers. [Defendant], on the other hand, provided [Defendant’s expert’s] survey, and this survey indicated that Redline had not attained secondary meaning. While survey evidence is not required to prove secondary meaning, the fact that Plaintiff did not offer its own survey when faced with [Defendant’s] survey evidence mitigates against any finding that secondary meaning exists.

General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405, 418-419 (6th Cir. 2006)

…[Plaintiff] also relies on a survey from 2002, conducted in anticipation of this litigation. [Plaintiff’s] survey concluded that Hummer’s trade dress had secondary meaning… [Defendant] argues that [Plaintiff’s] survey evidence is not enough to establish secondary meaning. First of all, it argues that secondary meaning must be proven before the first allegedly infringing use of the trade dress…Survey evidence from either 1999 or 2002 is therefore not relevant given that [Defendant] developed the [first allegedly infringing product] in 1992 and the [second] allegedly infringing [product] in 1997. [Plaintiff] retorts that such a blanket rule would invalidate all surveys of trade dress conducted in anticipation of litigation.

This Court has historically favored the use of consumer surveys as proof of secondary meaning…However, the question remains whether we should ignore all survey evidence conducted post-infringement or accept the evidence with the understanding that the survey does not reflect a pre-infringement world. A court may easily take into consideration the strength of recognition at the time of the survey in light of the amount of time passed between that date and the date of infringement. We have previously taken the latter course…This seems to be the appropriate choice, given the relatively unlikely scenario that a company has conducted a pre-infringement survey and this Court’s strong support for survey evidence in evaluating secondary meaning. In light of the strong statistical evidence (96% recognition in 1999 and 77% recognition in 2002), we hold that [Plaintiff’s] survey evidence was sufficient to support secondary meaning…

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Shuffle Master Inc. v. Yehia Awada, 2006 U.S. Dist. LEXIS 66418, *7-*8 & n.1, *15 (D. Nev. 2006)

Additionally persuasive is [Plaintiff’s] evidence in the form of a survey of table game managers from a cross-section of casinos in the United States indicating that 35% of individuals interviewed associated [Plaintiff’s] Four Card Poker Game with a single source…[n.1 Various courts have held that such a percentage of recognition (approximately 30% or more) is probative of secondary meaning. See Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998); Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983); McNeil-PPC v. Granutec, Inc., 919 F. Supp. 198 (E.D. N.C. 1995).]

… …And further, the survey conducted by [Plaintiff] implies that [Plaintiff’s] table design is a strong trade dress…

American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 195, *62-*64 (T.T.A.B. 2006)

The statement of the purpose and the conclusion in applicant’s survey report exhibits a conceptual flaw which permeates the survey. To show acquired distinctiveness, it is not sufficient to show that the applicant is the party “most commonly associated with” the product design. Rather, the applicant must show that the product design identifies a single source, that is, that the public has come to expect that every plug having the appearance of applicant’s plug to be from applicant, even though it does not bear the [Applicant’s word] mark…

…the fact that only 19% think only one company makes products employing this product design contradicts applicant’s claim that applicant’s mark has acquired distinctiveness…Here, 19% is far short of the level necessary to show applicant’s mark has acquired distinctiveness, even if the result was otherwise reliable. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424 (Fed. Cir. 1985)(surveys showing 41% and 50% recognition, submitted together, found sufficient to establish acquired distinctiveness for trade dress); In re Jockey Intl., Inc., 192 USPQ 579, 581 (TTAB 1976)(survey showing 51.6% recognition found sufficient to establish acquired distinctiveness for trade dress).

Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas Subsidiary, 2006 U.S. Dist. LEXIS 9752, *20, *22 (N.D. Tex. 2006)

Defendant seeks to exclude the results of a survey conducted by [Plaintiff] to determine whether a hospital known as “Children’s” has acquired secondary meaning among parents in the Dallas area…The…survey found that “[a] total of 58% of Dallas parents interviewed believed that ‘Children’s’ identified one specific Dallas

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hospital, and specifically Children’s Medical Center of Dallas.”…Defendant objects that the results of this survey are unreliable because: (1) the survey universe is not limited to parents or guardians who make healthcare decisions for their children; (2) responses are based on an improper leading question; and (3) only Dallas County residents were interviewed.

… [Plaintiff’s expert] surveyed 65 adult men and 157 adult women in

Dallas County, Texas who live with a child under 18 years of age…Each person interviewed was asked:

If someone mentioned a Dallas hospital to you, and called it “Children’s,” do you think “Children’s”

--Identifies one specific Dallas hospital --Or, describes more than one Dallas hospital which provides pediatric services?

…Defendant correctly observes that the survey universe is not necessarily limited to parents who make healthcare decisions for children. Instead, potential respondents include adult siblings, babysitters, relatives, or friends living in the same household as a minor child. Defendant also believes that the geographic area of the survey is too limited and that the operative question asked of the respondents -- whether a Dallas hospital called “Children’s” identifies one specific hospital or more than one hospital which provides pediatric services -- is biased in favor of selecting the first response…

Cartier v. Samo’s Sons, Inc. 2005 U.S. Dist. LEXIS 23395, *12-*13 (S.D.N.Y. 2005)

…The survey found that “sixty-one percent of the respondents associated the design of the [Plaintiff’s] watch with a single company.”…Defendants argue that the [Plaintiff’s survey] is “flawed” because it “did not test the perceptions of an ordinary observer.”…

[Plaintiff’s survey] shows that a majority of consumers who “reported owning a fine watch valued at $2,500 or more” or “were very likely to buy a fine watch in the next year” identify the [Plaintiff’s watch] with one source. “The Plaintiff is not required to establish that all consumers relate the product to its producer; it need only show that a substantial segment of the relevant consumer group makes this connection.”…

Schwan's IP, LLC, v. Kraft Pizza Co., 379 F. Supp. 2d 1016, 1023-1024 (D. Minn. 2005)

…[Plaintiff] commissioned…a survey…of 400 potential purchasers at malls in eight U.S. locations, where participants were shown [Plaintiff’s] commercial twice and were then able to browse a…computerized simulation of a grocery store frozen pizza aisle. The sample was randomly split into a control group and a test group…

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[Plaintiff] argues that its…survey demonstrates secondary meaning by showing that between 13% and 14% of consumers believe there is an association between the [Plaintiff’s] and [Defendant’s] brands. But the…[s]urvey is not persuasive with regard to secondary meaning because participants were improperly shown [Plaintiff’s] product, thereby forcing their awareness of the product, rather than gauging the participants’ pre-existing awareness…[Plaintiff’s expert] agreed in his deposition that he is not aware of any court that has accepted or authorized his simulation’s methods…As such, [Plaintiff’s] survey is flawed and does not support a finding of secondary meaning.

[Plaintiff] next points to…a Teflon-type survey, in which respondents are first instructed on the definition of common names and brand names, pre-tested on their understanding of common names and brand names, and then asked to categorize certain test and control phrases or words as brand names or common names…

[Plaintiff] argues that the…[s]urvey demonstrates secondary meaning in that 61% of the respondents believed that BRICK OVEN was a brand name that originates from “one particular company.” But the…[s]urvey was conducted months after [Defendant’s] BRICK OVEN STYLE product had already entered the market…

Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001, 1005 (8th Cir. 2005)

The record, when viewed in favor of [Plaintiff], demonstrates that [Defendant] is entitled to judgment as a matter of law on this issue. [Plaintiff] has failed to put forth more than a scintilla of evidence that the public recognizes its “Frosty Treats” mark and associates it with a single source. [Plaintiff] claims that its survey evidence demonstrates that the term “Frosty Treats” has acquired secondary meaning, but, if anything, it indicates the opposite. In the survey, respondents were shown images of the Frosty Treats ice cream van and asked, “Are you familiar with or have you ever seen or heard of this before?” Forty-seven percent responded affirmatively. They were then asked what they knew about the van. The respondents most frequently mentioned that it sold ice cream. Only one percent of the respondents in the survey mentioned Frosty Treats by name. There is no indication in the record that the survey respondents (apart from the one percent) were familiar with the vans because of the small nine-by-four-inch “Frosty Treats” decal on the rear portion of the side of the van, the only place where the phrase “Frosty Treats” appears on the vehicle…[Plaintiff’s] survey provides no basis to conclude that the respondents associated the van with a single source as opposed to simply a generic ice cream truck.

In re Steelbuilding.com, 415 F.3d 1293, 1300 (Fed. Cir. 2005)

The Board considered applicant’s Internet poll on name recognition. The poll…first asked visitors a few questions about current events or sports, e.g., “Who will win Election 2000? Who will win the NBA title?” then asked “which one of the following building manufacturers is the most recognizable?” In the

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poll, the applicant was more recognizable than the others on the list…This court agrees with the Board that this particular poll lacked sufficient signs of reliability. For instance, the poll results do not indicate the number of actual participants. The poll did not attempt to prevent visitors from voting more than once. The poll did not prevent interested parties, such as friends or associates or even employees of the applicant, from voting multiple times to skew the results. In sum, this poll does not even remotely follow the precepts of standard trademark name-recognition polls…the survey did not show sufficient reliability to constitute sufficient evidence of acquired distinctiveness…

Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088, 1098-1099, 1106-1108 (9th Cir. 2004)

…The concurring opinion is incorrect in its suggestion that the case necessarily must go to trial because distinctiveness of a mark is a question of fact and defendants have contested the reliability of plaintiffs’ survey evidence. That conclusion flies in the face of the 1986 triumvirate of summary judgment cases. [n34 See Celotex, Corp. v. Catrett, 477 U.S. 317, 91 L. Ed. 2d 265, 106 S. Ct. 2548 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 91 L. Ed. 2d 202, 106 S. Ct. 2505 (1986); Matsushita Elec. Indus. Co. v. Zenith Radio, 475 U.S. 574, 89 L. Ed. 2d 38, 106 S. Ct. 1348 (1986).]…Regardless of whether questions are factual, there is nothing to try unless there is a genuine issue of material fact. One survey that is impeachable, but still good enough to get to a jury, weighed against no survey evidence at all on the other side, along with all the other evidence in the record, does not necessarily add up to a genuine issue of fact. [Compare: Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001); Thane InterNat’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002; Playboy Enterprises, Inc. v Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004)

… [Concurring opinion] …I write separately to express my view that the evidence that Plaintiffs have presented thus far is insufficient as a matter of law to establish that their mark is famous or well-known. The survey population and the survey’s results establish little more than the fact that Plaintiffs’ customers are familiar with Plaintiffs’ stores… The district court, relying entirely on survey evidence, concluded that Plaintiffs’ trademark had acquired secondary meaning and was thus entitled to protection from domestic users…The survey population consisted of only 78 people in San Diego County who were “Spanish-speaking, and had recently purchased Mexican-style food at a supermarket or other food store.”… However, the survey was conducted in 2000, nine years after Defendants first began using the Gigante name in the United States. When testing for awareness of the Gigante mark before Defendants’ entry into the San Diego market in 1991, the awareness level dropped to 20 to 22 percent of the respondents…

That evidence is insufficient in two important respects. First, the survey result is highly questionable in view of its narrowly defined survey population. Plaintiffs’ own description of their stores makes clear that the goods sold are little

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different from those available in any large retail grocery store…Further, Plaintiffs admit in their briefs that the clientele of their Mexican stores includes “both Hispanic and non-Hispanic” customers. Consequently, nothing about either the nature of the goods sold by Plaintiffs or its customer base warrants limiting the relevant public to Mexican-Americans.

We have rejected similar attempts to limit the relevant sector of the public. For instance, in Japan Telecom, Inc. v. Japan Telecom America Inc…a trademark dispute between two providers of telecommunications services, the plaintiff advertised only to “members of the Japanese and Japanese American business communities in Southern California.” Nonetheless, we concluded that “the relevant buying public consists at least of buyers of telephone and network installation services in that region.”…Thus, we emphasized the nature of the service provided, rather than the composition of the market to which the plaintiff actively targeted its services.

Because Plaintiffs sell widely-available, non-specialized goods to the general public, it is uninformative to focus exclusively on Mexican-Americans living in San Diego County. The district court’s reliance on Plaintiffs’ survey is especially problematic because its population was limited to Mexican-Americans who had recently purchased Mexican-style food at a supermarket or grocery store. That survey is only very slightly more informative than the study whose probative value we dismissed entirely in Avery-Dennison Corp. v. Sumpton…because it focused exclusively on the plaintiff’s existing customers: “Avery Dennison’s marketing reports are comparable to a survey we discussed in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc…proving only the near tautology that consumers already acquainted with Avery and Avery Dennison products are familiar with Avery Dennison… …the relevant sector of the public consists of all residents of San Diego County, without qualification.

Winchester Federal Savings Bank v. The Winchester Bank, Inc., 359 F. Supp. 2d 561, 565-566 (E.D. Ky. 2004)

The plaintiffs present survey evidence to support their claim that WINCHESTER has a secondary meaning. “Survey evidence has become a well-recognized means of establishing secondary meaning.”…The defendant’s complaints about the survey evidence are that the methodology, questions, and data interpretation are flawed, but it offers no survey evidence to rebut it…The survey consisted of open-ended questions, such as asking respondents to identify financial institutions in Clark County and their location. Approximately 35% of the respondents identified [Plaintiff] in connection with the word “Winchester” as a bank in Clark County. Thus, the survey results support a finding that WINCHESTER is associated with the banking services provided by the plaintiff.

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McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733, *28-*32 (D. Puerto Rico 2004)

…In the survey, consumers who both (a) have purchased a no-calorie sweetener in the past three months, and (b) plan to do so again in the next three months, were shown one of two packages. One group -- the so-called “test” group -- was shown a package that contained the graphics used on the actual Splenda package, but with all textual references to Splenda, including the brand name, removed…and respondents were asked a series of questions [including]…

… …“What do you think is the brand name of the No-Calorie Sweetener that

I showed you?”…[and] “why do you think that?”… …A second group of...consumers -- the so-called “control” group -- was

shown a different package that does not resemble the current Splenda trade dress…

…Consumers in the “control” group were asked the same questions as those in the “test” group…four respondents in the control group -- four percent -- said that they associated the control package with Splenda. This represents the “noise” level of the survey -- i.e., the approximate percentage of respondents who answer “Splenda” for reasons unrelated to the package they are shown (e.g., guessing, brand awareness or popularity, etc.)…Subtracting this four percent from the 62.5 percent of respondents in the test group who associated the test package with only the Splenda brand, the survey shows a “net” level of recognition of the Splenda trade dress of 58.5 percent. This percentage is more than sufficient to establish secondary meaning…

Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708, *33-*36 (N.D. Cal. 2004)

On reply to their motion for summary judgment, Defendants submitted for the first time their Food and Beverage Study, a survey of potential consumers with regard to their recognition of the Meeker name…

Substantively, Plaintiff objects to the introduction of the survey evidence on three bases: (1) the survey is irrelevant, confusing and a waste of the Court’s time; (2) the survey is improper because it fails to comport with validly scientific methods; and (3) there is no authority to support introduction of the survey by Defendants for the purpose of disproving, as opposed to establishing the existence of, secondary meaning.

With regard to the contention that the survey is irrelevant and confusing, such blanket objections go to the weight of the survey, not its admissibility...

With regard to the contention that the methodology employed by Defendants’ expert was invalid, the Court finds that these challenges, for instance to the scope of the interviewed population or the failure to thoroughly analyze the data gathered, are challenges that similarly go to the weight of the survey evidence and not its admissibility…

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Third, Plaintiff contends that survey evidence is not admissible for the purpose of disproving the existence of secondary meaning, but only for the purpose of affirmatively establishing the existence of secondary meaning. However, in Levi Strauss & Co. v. Blue Bell, Inc.…the Ninth Circuit favorably reviewed the district court’s admission of a survey conducted to support a finding of no secondary meaning. It is clear that using survey evidence to disprove the existence of secondary meaning is permissible.

In re Ivanko Barbell Co., 2004 T.T.A.B. LEXIS 345, *24-*25 (T.T.A.B. 2004). This disposition is not citable as a precedent of the T.T.A.B.

While the survey is evidence that a very small group of potential purchasers (owners, presidents, vice-presidents, and general managers of health/racquet and fitness clubs) may recognize the applicant’s design as a trademark…we have little, if any, evidence of whether the broader group of prospective purchasers would recognize applicant’s design as a trademark. We note that applicant’s goods are identified as barbell plates without any limitation as to prospective purchasers…

The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130, 137-138 (D. Mass. 2003)

…[Plaintiff] has produced a consumer survey…in support of its position that its implant has acquired secondary meaning…That survey does not support [Plaintiff’s] claims.

… …the study does not filter out the non-functional features from those that

are functional to evaluate which features consumers use to identify the source of the product…

… [Plaintiff’s] study on secondary meaning also suffers from an additional flaw which would lead me to exclude it from the jury's consideration. The initial questions asked of the respondents were: “What company do you think puts out these products? If you do not know, please feel free to say so.”…These questions presume the existence of the key element in a secondary meaning inquiry, namely the association of the design with a single source…Hence, the [Plaintiff’s] study would not be helpful to a jury attempting to determine whether consumers associate the product features at issue with a single manufacturer, because the survey suggested to the respondents that the products did come from a single manufacturer…

March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786, 803-804 (N.D. Tex. 2003)

…Plaintiff conducted a Teflon [type] survey, and concluded that the primary significance of March madness…is as a trade name relating to basketball…

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The survey was a double-blind…[telephone] survey…based on a list of randomly generated residential phone numbers from the continental United States. The ‘next birthday technique’ was used to randomly select the actual respondent to the survey within each residence which was called…within the relevant sample of persons who knew March madness was related to basketball, over 60% classified it as a trade name. Based on this evidence, the Court finds that March madness has acquired secondary meaning as a trade name.

Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933, *29-*30 (D. R.I. 2003)

Boston Beer, as cited by [Defendant], is not dispositive of this issue…The Boston Beer court upheld the district court’s judgment that secondary meaning had not been sufficiently shown when only 36% of persons who participated in a secondary meaning survey associated the mark with the source. Here, [Defendant] argues that the fact that only 30% of survey participants matched [Plaintiff’s mark] is insufficient to show secondary meaning under Boston Beer…While the First Circuit in Boston Beer did state that “a positive response rate of 36% is hardly overwhelming,” it did not hold that a positive response rate of approximately 36% is always insufficient to show secondary meaning as a matter of law…

WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463, 471 (S.D.N.Y. 2002)

Regardless of the awards, and as Defendants point out, survey evidence does not support [Plaintiff’s] claim to acquired distinctiveness…[Plaintiff] retained Group Plus, Inc. and Yahoo! to conduct surveys. According to its report, Group Plus conducted thirteen focus groups…not intended to measure brand awareness of [Plaintiff]; rather, it was designed to help [Plaintiff] increase awareness of its brand. Nonetheless, it found that: “There was a very low level of awareness of WeMedia among the people in these groups.”

Similarly, the Yahoo! survey was not designed to measure the precise question before the Court but…concluded…very few knew of WeMedia.com or We Magazine -- even within a community of people who know disabled friends or family, or have a disability there is not strong brand awareness yet.

Carroll Shelby Licensing, Inc. v. Superformance Int’l., Inc., 251 F. Supp. 2d 983, 986-987 (D. Mass. 2002)

…[Plaintiff] has failed to present any evidence that consumers associate the Cobra design with [Plaintiff], and [Plaintiff] alone as source…[Plaintiff’s expert] performed face-to-face interviews with sports-car hobbyists at one industry trade show. Although the survey establishes an association between the Cobra design and [Plaintiff]…[Plaintiff] must prove that the primary significance of the Cobra shape in the minds of consumers is to identify [Plaintiff] as the single producer…

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The most troubling aspect of the report is…conclusory grouping of responses…When asked if they recognized the picture of a Cobra design, [Plaintiff’s expert] reports that over 50% of the people surveyed associated the picture with [Plaintiff]. Within this percentage, however, [Plaintiff’s expert] includes numerous different responses, such as “Cobra,” “Shelby Cobra,” and “Ford Shelby Cobra.” By grouping these responses into one “Shelby” category, [Plaintiff’s expert] assumes the answer to the very question at issue. Not only are [Plaintiff’s expert’s] conclusions illogical in a very basic sense, but they are also completely unreliable and bear no weight on [Plaintiff’s] secondary meaning argument…

U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517, 526 (4th Cir. 2002)

…[Plaintiff] has failed to satisfy any of the factors relevant to secondary meaning…[Plaintiff] has spent minimal amounts of money on advertising and has enjoyed limited sales success…[Plaintiff] presented no evidence of attempts to plagiarize the mark, no evidence of any unsolicited media coverage, no consumer studies, and no evidence of exclusive use…On the other hand, [Defendant] offered a consumer study it commissioned of individuals in the plastics industry who used, or were likely to use a recruiting firm. [n13 Survey evidence is generally thought to be the most direct and persuasive way of establishing secondary meaning…] This study showed that only 2% of those queried appeared to know “U.S. Search,” the type of firm it is, and the services it provides.

In re 1-800 CONTACTS, INC., 2002 T.T.A.B. LEXIS 247, *10 (T.T.A.B. 2002)

…Survey respondents were asked whether they wear contact lenses; what companies they have seen or heard of that sell contact lenses by mail or on the Internet (unaided recall); whether they had heard of listed companies, including applicant (aided recall); and, if they wear contact lenses and purchased their last pair of contact lenses by mail or Internet, from whom did they make that purchase…results stated that, “among the representative sample of contact lens wearers, 1-800 Contacts measured 20.8% unaided awareness, 40.2% aided awareness and 61.0% total awareness.”…we find it to be probative of the issue of acquired distinctiveness.

Ty Inc. v. The Jones Group, Inc., 2001 U.S. Dist. LEXIS 18912, *16-*17 (N.D. Ill. 2001)

The record shows that [Plaintiff’s] Beanie Babies have been extremely successful for a number of years and have been featured extensively in the media and in web sites. But is the word “Beanie” merely a common descriptive term for bean bag toys? [Plaintiff] points to a nationwide toy survey finding that over 70% of those surveyed identified the words “Beanies” and “Beanie” with Beanie Babies and [Plaintiff], while [Defendant] takes issue with the methodology used in the [Plaintiff’s] study. The court finds that the word “Beanie” is not purely descriptive and thus is not generic…the record shows that [Plaintiff’s] Beanie

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Babies mark is strong or, at the very least, that the precise strength of the mark is a material issue of disputed fact…

Coach, Inc. v. We Care Trading Co., Inc., 2001 U.S. Dist. LEXIS 9879, *6 (S.D.N.Y. 2001)

Consumer surveys conducted…at [Plaintiff’s] behest in 1995 and 1996,

also established the existence of secondary meaning in the trade dress…The 1995 survey was performed in “weaker” Coach markets, areas in which [Plaintiff] did not sell its products at its own stores but rather through department stores. The 1996 survey was performed in “stronger” Coach markets, including cities where [Plaintiff] tends to perform well as well as in shopping malls where [Plaintiff] had stand-alone stores…found that 30 percent of women shown a Coach bag identified it as such in 1995, compared to 65 percent in 1996. In contrast, when shown a non-Coach control handbag, 3 percent of women in 1995, and 1 percent of women in 1996, identified it as a Coach bag.* *It appears the same secondary meaning surveys reported here were also offered in a prior litigation. (See also Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill. 1998).)

Clicks Billiards Inc. v. Sixshooters Inc., Ronald R. Forbes, Jane Doe Forbes, 251 F.3d 1252, 1262-1264 (9th Cir. 2001)

…In this survey, patrons at a [Plaintiff’s] establishment were asked, “Do you associate the visual look and appearance of this billiard parlor with Clicks Billiards only or with other billiard parlors too?” Eighty percent of respondents said that they associated the look and feel with [Plaintiff] only; eighteen percent said, “Other billiard parlors too.”

The district court stated, “This survey is not without flaws,” and ultimately concluded, “Put bluntly, the survey is of little or no value.” The court was troubled by the fact that in response to a follow-up question, respondents often used vague and general language in describing [Plaintiff’s] image and made reference to unprotectable features of [Plaintiff’s] interior, such as its cleanliness, upkeep, good service, and music. This is a valid observation and may indeed be true, but the issue is not one subject to resolution on summary judgment.

… Ultimately these responses may not add up to much, and a reasonable

juror might ultimately agree with the district court that the survey did not prove that [Plaintiff’s] trade dress had acquired secondary meaning. But the juror could only have done so after considering conflicting evidence and deciding what weight to accord the survey and the follow-up interviews. This undertaking describes the proper role for a trier of fact; it is not the role of a district court at the summary judgment stage where the issue is whether a triable issue of fact even exists…

Here, the district court did not exclude the survey on the ground that it was irrelevant or that it was undermined by some other fatal flaw. Rather, the court

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appeared to admit the survey into evidence and then to analyze what it considered to be its deficiencies. Treatment of surveys is a two-step process. First, is the survey admissible? That is, is there a proper foundation for admissibility… This threshold question may be determined by the judge. Once the survey is admitted, however, follow-on issues of methodology, survey design, reliability, the experience and reputation of the expert, critique of conclusions, and the like go to the weight of the survey rather than its admissibility…[Also see Schering Corp. v. Pfizer Inc., 189 F.3d 218, 230-238 (2d Cir. 1999).] These are issues for a jury or, in a bench trial, the judge. In laying this guide for analysis of survey evidence, we are not endorsing the survey here nor are we prejudging its fate at trial. Nor are we suggesting that the presence of a survey will always preclude summary judgment. We are simply saying that the survey admitted by the district court raises questions of material fact with respect to secondary meaning that may not be disposed of by the court alone.

America Online, Inc. v. AT&T Corp., 243 F.3d 812, 822 (4th Cir. 2001)

[Plaintiff] argues that its survey evidence indicates an association in the public’s eye between “You Have Mail” and [Plaintiff] and that this association is sufficient to permit a reasonable factfinder to conclude that “You Have Mail” is a trademark descriptive of its e-mail service that has acquired secondary meaning...

… …[Plaintiff’s] evidence of association may establish what is called “de

facto secondary meaning,” but such secondary meaning does not entitle AOL to exclude others from a functional use of the words…

Binney & Smith v. Rose Art Industries, 2000 U.S. Dist. LEXIS 18384, *16 (E.D. Pa. 2000)

…Plaintiffs also offer evidence that demonstrates a high marketplace recognition among its target consumers, the mothers of young children…A survey conducted in 1999 [prior to the litigation] revealed that ninety two percent of mothers of children aged 2-12 demonstrated an unaided brand awareness [of] Crayola…In the same survey, eighty four percent of mothers viewed Crayola as a high quality brand and eighty three viewed Crayola as a brand “I can trust.”... As a result, the Court concludes that Plaintiffs mark has a high level of commercial strength.

BIC Corp.s and Wite-Out Products, Inc. v. Far Eastern Source Corp., 2000 U.S. Dist. LEXIS 18226, *3 (S.D.N.Y. 2000)

A consumer survey conducted by [Plaintiff] in 1999, prior to the initiation of this action, showed an 86% unaided brand awareness for the WITE-OUT name…

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Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., and S & H Greenpoints.com, Inc., 116 F. Supp. 2d 405, 409 (S.D.N.Y. 2000)

Plaintiff has not put forth evidence demonstrating that Greenpoint has achieved secondary meaning either in New York or nationally. While its survey, assuming its validity, may demonstrate some name recognition in the New York metropolitan area for the term “Greenpoint Bank,” this is insufficient to establish secondary meaning, for either federal or state infringement purposes, for the term “Greenpoint.” In addition, the flaws in the survey, from lack of objectivity in creation and determination of parameters because of the involvement of Plaintiff’s law firm, lack of a control group, and the addition of questions a third of the way into the sampling, cast serious doubts on the value of the survey and any conclusion the Plaintiff seeks to draw therefrom.

Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 440 (3d Cir. 2000)

…[Plaintiff] also points to a recent customer satisfaction survey as evidence supportive of the District Court’s finding that the mark achieved secondary meaning. However,…[Plaintiff’s] reliance on that survey is misplaced because the survey is wholly irrelevant to whether…[Plaintiff] established secondary meaning in the “Commerce” mark as of 1983. First, based on the recency of the survey, it follows that it is not particularly probative of customer views in 1983. Second, and more importantly, customer surveys and customer testimony are relevant to the secondary meaning inquiry only insofar as they are probative of the strength of the “Commerce” mark in the collective consumer consciousness. The satisfaction of customers with …[Plaintiff’s] services does little to demonstrate that when customers see the word “Commerce” they associate it with…[Plaintiff, apart from Plaintiff’s composite mark].

Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126, 1127-1128 (N.D. Iowa 2000)

By virtue of Ford’s and Ford Credit’s long use, advertising, and promotion, the FORD Name and Marks are distinctive and famous, possessing a strong secondary meaning signifying Ford and the financial services it offers and provides. Survey results evidence this fame and secondary meaning. In a recent survey of individuals seeking or planning to seek investment and other financial information or advice, 54% of consumers throughout the United States stated that they believe Ford is responsible for the Internet site at www.fordfinancialsolutions.com.

General Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154, 1160 (S.D. Fla. 2000)

The…Survey conducted by Plaintiff’s expert witness…in the summer of 1999, established Plaintiff’s use of its mark has resulted in the general public in

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the United States identifying the words “SEVENTH-DAY ADVENTIST” with the Plaintiff Church. Further, the…Survey showed that the Plaintiff’s mark has achieved secondary meaning in the minds of the general public throughout the United States as identifying the Plaintiff Church. Two prior surveys conducted by the Gallup Organization in 1970 and 1986 also support strong identification in the minds of the public between the mark SEVENTH-DAY ADVENTIST and the Plaintiff Church.

Minnesota Mining and Mfg. Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d 997, 1003 (D. Minn. 2000)

…The types of evidence relevant to the question of secondary meaning include: (1) customer surveys; (2) exclusivity, length, and manner of use; (3) amount and type of advertising; (4) media coverage; (5) sales volume and market share…

Here, [Plaintiff] has produced substantial evidence of secondary meaning. First, [Plaintiff] has introduced survey evidence supporting the conclusion that consumers strongly associate canary yellow sticky notes with [Plaintiff] and the POST-IT product…

In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843, 1847-1848 (T.T.A.B. 1999)

With respect to acquired distinctiveness… Applicant has also relied upon certain material from…[a prior] litigation…pilot study…

… For a variety of reasons, we have given little weight to applicant’s ten-year

old pilot study. Among other things, the respondents in that study were shown applicant’s watch which contained allegedly origin-indicating matter other than the asserted mark herein sought to be registered. This reason alone is sufficient to give little weight to the study…

Black & Decker (U.S.) Inc. v. Pro-Tech Power Inc., P & F, 26 F. Supp. 2d 834, 851 (E.D. Va. 1998) ...[Plaintiff’s] survey expert, found that eighty-five percent of the

professional power tool users that he polled identified yellow and black with Black & Decker or DeWalt...a level of consumer recognition that parallels the extent to which the public associates golden arches with the McDonald’s Corporation...

... Although...Defendants’ survey expert, pointed out that...[Plaintiff’s

expert] could only measure consumer perceptions in 1998..., the fact that brand identity takes time to develop...means that...[Plaintiff’s expert’s] conclusions inferentially support...how quickly consumers began to associate yellow and black with the DeWalt line...

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In light of this evidence, the Court finds that the yellow and black color scheme on the DeWalt line achieved secondary meaning in the minds of professional power tools users by May, 1992...

Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914, *23-*25, *39 (N.D. Ill. 1998) In order to test for secondary meaning, ...[Plaintiff’s survey] showed the

respondents (women 18 years or older who would consider purchasing a handbag for more than $50) three COACH bags with the COACH hang tags removed...[Plaintiff’s survey] also showed these respondents three leather handbags manufactured by Kenneth Cole. These three bags are of comparable size to the COACH bags, but are in other respects-leather texture, hardware, and overall design-dissimilar to COACH products...In half the instances,...the participants [were shown] the COACH bags first and, for the other half, he displayed the Kenneth Cole bags first... participants...were not allowed to touch the bags.

...[Plaintiff’s survey] then asked each respondent whether she believed each set of handbags looked like a particular brand of handbags or not, and, if yes, what brand of handbags she believed the handbags looked like...In the weaker COACH markets, 57 percent...responded by saying that the three COACH handbags looked like a particular brand...Further, close to 30 percent of all respondents identified COACH as the brand of the COACH bags; only 3 percent of the respondents identified COACH as the manufacturer of the Kenneth Cole bags...

In the stronger COACH markets, 75 percent...believed the COACH bags looked like a particular brand, and of these, close to 65 percent identified COACH as the brand...Only 1 percent of the respondents believed the Kenneth Cole bags looked like COACH bags...

... ...as shown by...[Plaintiff’s] survey, ...consumers have come to recognize

the trade dress in COACH’s Classic Collection... Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 349-350 (S.D.N.Y. 1998) ...out of 200 people interviewed in ...[Plaintiffs’] telephone survey, 42%

of all respondents had heard of or seen a motion picture with the words “River Kwai” in the title...Seventy-four percent of those respondents identified that motion picture as Bridge...[Plaintiffs’] mall survey of 100 people disclosed that 51% of all respondents had heard of or seen a motion picture with the words “River Kwai” in the title...Again, approximately 73% of those respondents gave a description of Bridge...

... Defendants...suggest that...[Plaintiffs’] survey is flawed because it posed

leading questions to its respondents...The question posed by [Plaintiffs’ expert] was whether they had ever heard of any motion picture or motion pictures with

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the words “River Kwai” in the title. Defendants suggest that a better question would have been “with whom or what do you associate ‘River Kwai.’...Since Plaintiffs claim trademark protection in the title “The Bridge on the River Kwai” and in the words “River Kwai” when used in the title of a motion picture, this Court finds that [Plaintiffs’ survey] question was appropriate...Defendants’ suggested question might have been appropriate had Plaintiffs claimed a trademark in the phrase “River Kwai” for any purpose. Here, however, in the context of the narrower trademark claimed by Plaintiffs, Defendants’ suggestion is off the mark.

... ...Although...[Plaintiffs’] survey is not perfect, and thus is not conclusive

evidence of secondary meaning, this Court finds that ...[Plaintiffs’] survey establishes some evidence that Plaintiffs’ marks have attained secondary meaning.

Yankee Spirits, Inc. v. Gasbarro, 1998 U.S. Dist. LEXIS 22159, *30-*31 (D. Mass. 1998) In order to indicate secondary meaning, consumer surveys must prove

more than a “relatively small number of people” associate the mark with the source of the product. 2 McCarthy at §15:42. Often, consumer recognition below 25% fails to establish secondary meaning. See e.g., Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F Supp 670 (S.D.N.Y. 1963) (25% insufficient); Roselux Chemical Co. v. Parsons Ammonia Co., 49 C.C.P.A. 931, 299 F.2d 855 (C.C.P.A. 1962) (10% insufficient)…

...[Plaintiff] has failed to submit its own consumer survey. Instead,...[Plaintiff] cites [Defendant’s] survey to prove that a sufficient percentage of consumers are familiar with a business by the name of “Yankee Spirits.”...[Plaintiff] explains that 29% of the participants in the survey (residents within an eight (8) mile radius of ...[Plaintiff’s] store) had heard of “Yankee Spirits” in June of 1996...

...[Defendant]...argues that 29% is not sufficient as a matter of law to warrant a finding of secondary meaning...[Defendant] argues...that “Plaintiff has proferred [sic] no direct evidence whatsoever on the issue of secondary meaning...

...[Plaintiff’s] failure to produce its own survey evidence and the fact that [Plaintiff] presents statistics taken from... [Defendant’s] survey are far from fatal to ...[Plaintiff’s] cause. Of particular importance is the fact that...[Defendant’s] survey was conducted within one month of the opening of...[Plaintiff’s] store...Given this limited time period...[the 29% is]... understandable...

Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 295 (7th Cir. 1998) ...[Defendant] argues...that the...survey was flawed because the

interviewees were not consumers...when, as here, the relevant market includes both distributors and ultimate purchasers, the state of mind of dealers is important in determining if secondary meaning exists. While the fact that no ultimate consumers were surveyed may be relevant in determining the weight the survey should be given...

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... The district court...found that the...survey did not establish secondary

meaning, since the 30% recognition was insufficient to establish secondary meaning. The court cited Spraying Systems, 975 F.2d at 394, for the proposition that “while a 50-percent figure is regarded as clearly sufficient to establish secondary meaning, a figure in the thirties can only be considered marginal.”...We noted that figures in the 30% range were marginal and did not establish secondary meaning as a matter of law. Such evidence is still probative of the issue of secondary meaning...the survey provides relevant evidence of secondary meaning which raises material questions of fact.

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LIKELIHOOD OF CONFUSION SURVEYS General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711, *53-*55, *57 (D. Utah 2010)

In the present case, a survey...was offered by [Plaintiff] to establish that there is actual confusion in the marketplace between the Hummer and an assembled Urban Gorilla...

The survey was a double-blind, test-control survey administered online...Respondents viewed three images from different viewpoints of either an assembled Urban Gorilla wagon model body kit or a military-style control vehicle...Each respondent then answered a series of questions related to the images...The terms “Hummer,” “GM,” or “Urban Gorilla” were not used in the questions about the images and there were no other brand identifiers... ...[Plaintiff’s expert] identified individuals in the “relevant” group as a “consumer who has purchased in the last three years or plans to purchase within the next three years a new or used four-wheel drive SUV with off-road capability and who is a decisionmaker in their household for a car, truck, or SUV” because both [Plaintiff] and [Defendant] market their products to this group...A random selection of individuals who met market data demographics affiliated with this group were invited to participate in the survey...

Half of the 1100 respondents completed the test condition survey and the other 550 completed the control condition...In the summary of his findings [Plaintiff’s expert] shared that the net confusion rate among those surveyed was 50.4%...This percentage represents the difference between the number of respondents in the control condition who associated the images with Hummer or GM (21.1%) and those in the test condition who associated the image with Hummer or GM (71.5%).

... ...The respondents in this case repeatedly said the Urban Gorilla was a “Hummer” and when asked why, the oft recurring response was “because it looks like one.” These responses strongly suggest, if not prove, actual confusion. Due to this compelling survey evidence, I find that there is actual post-sale confusion between the Urban Gorilla and Hummer...

1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948, *23 (D. Utah 2010)

An open-ended question was not required to create a valid survey question. Indeed, an open-ended question may have made interpreting the survey results more difficult. The problem, however, is not the failure to use an open-ended question, but the failure to design a close-ended question that offers exhaustive alternative responses...

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Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. Dist. LEXIS 109155, *30-*33 (C.D. Cal. 2010)

...[Plaintiff] submitted a blinded, controlled Eveready consumer confusion survey of more than 400 respondents at a sample of malls nationwide, which reported a 24.3% confusion level after adjusting for the confusion found in the control group...In other words, 24.3% of respondents answered that the VITI water bottle shown to them was made by FIJI or the same company that makes FIJI water, or was put out with the sponsorship or approval of FIJI...Many of these respondents’ reasons for thinking the product was associated with FIJI were the elements of the FIJI trade dress... [Defendant’s] own expert survey...does not discredit [Plaintiff’s] survey. [Defendant’s expert] reported an 8% confusion level in an online survey of 401 participants nationwide...The Court was troubled by several aspects of [Defendant’s expert’s] survey, all of which indicate that his report under-stated the confusion level...First, [Defendant’s expert] did not include as “confused” 10 respondents that misspelled FIJI as FIGI or FUJI or FUGI, which would increase the confusion level by 2.5%...Second, [Defendant’s expert] did not include as “confused” the 15 respondents who answered the question “What brand name, or names, if any, do you think are also used by the company that makes [VITI]?” with “Fiji” (or misspelled it), which would increase the confusion level by 4%...Third, [Defendant’s expert] did not count as confused any of the 53 respondents who answered “Fiji” when asked “Where do you think this product comes from?”...Admittedly, this is an ambiguous question, because many respondents probably answered on the basis of geographic origin, not brand name, but at least some of the subsequent answers given by these respondents do suggest that the respondent meant the brand, such as “Looks like the Fiji bottle.”...Finally, [Defendant’s expert’s] survey began with a question that listed numerous brands of water, including separately listing FIJI and VITI, which suggests to respondents at the outset that the two brands are not affiliated with each other...

Chanel, Inc. v. Frank Mauriello, Opposition Nos. 91168097 and 91172654, Cancellation No. 92046246, 27-31 (T.T.A.B. 2010 This opinion is not a precedent of the T.T.A.B.

...plaintiff...submitted a likelihood of confusion survey conducted for the EE logo...

...According to the [Plaintiff’s expert], the survey indicates that “approximately fourteen percent...of the relevant universe of potential purchasers of one or more of (defendant’s) intended products expressed the belief that (defendant’s) products bearing the stylized “ee” logo mark are either put out by (plaintiff), are put out with the authorization/approval

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of (plaintiff), or that the company that puts out the products has a business affiliation/connection with (plaintiff).”... ...fourteen percent, represents quite an appreciable number of potential consumers, based on the class of consumers being those members of the public interested in purchasing handbags, etc... [Plaintiff’s expert] explains the significance of the survey results when compared to the result of the control group:

Specifically, the survey results make clear that the causal nexus for likelihood of confusion is the appearance of the stylized “ee” logo mark and is not due to any other alternative explanation. Because the control cell, using the dissimilar yet interlocking fictitious stylized “mm” logo mark, also employed the same list of products and asked the same survey questions, and resulted in less than one percent likelihood of confusion with [Plaintiff], it is certain that the measured likelihood of confusion is attributable solely to the presence of the stylized “ee” logo mark... Defendant attacks the probative value of the survey, by contending that the survey questions were biased. We find no such deficiency... Defendant also takes issue with the plaintiff’s classification of certain responses as belonging in the category of those indicating a connection to [Plaintiff]. While we do not agree with defendant’s characterization, even if we were to subscribe to defendant’s calculations which reduces the survey result of 9% being confused, this percentage has been recognized by courts as supporting a finding of likelihood of confusion..

Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025, 1037-1038 (9th Cir. 2010)

...What makes the district court’s misuse of Levi Strauss even more glaring is its failure to mention even one of the numerous cases in which we have held that survey evidence should be admitted “as long as [it is] conducted according to accepted principles and [is] relevant.”...In sum, we conclude that the district court abused its discretion in excluding the survey because [Plaintiff’s expert] appears to have conducted the survey in accordance with accepted principles, and because the results of the survey are relevant to the ultimate question whether [Defendant’s] use of “Delicious” was likely to confuse consumers.

... To be sure, as [Defendant] argues and as the district court noted, the [Plaintiff’s expert’s] survey has a number of shortcomings, including the fact that it was conducted over the internet (thereby failing to replicate real world conditions), may have been suggestive, and quite possibly produced counterintuitive results. But these criticisms, valid as they may be, go to “issues of methodology, survey design, reliability, . . . [and]

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critique of conclusions,” and therefore “go to the weight of the survey rather than its admissibility.”...

People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173, *22-*23 (D. Conn. 2010)

[Defendant] also offered survey evidence of confusion... Defendant’s expert, conducted an online survey among 700 banking consumers in Western Massachusetts. The survey used the sequential “squirt” method. Respondents were shown Defendant’s mark (in photographs, advertisements or brochures) followed by three other banks’ marks. Respondents were then asked if any of the three later banks were “the same as” or “affiliated with” Defendant. Some of the respondents were shown Plaintiff’s mark in the second group, some were shown a control and some were shown “Bank of Western Massachusetts a division of People’s United Bank.” The survey found that 32% of respondents thought that the parties were the same or affiliated...However, the Court agrees with...Plaintiff’s rebuttal expert, that the survey was suggestive. The question posed - which if any of the banks are the same as or affiliated with Defendant - provokes a “demand effect.”...The question is leading. It logically elicits more answers finding affiliation because respondents know what the survey tests. In addition, respondents actually exhibited more confusion between PeoplesBank and “Bank of Western Massachusetts, division of People’s United Bank” than between PeoplesBank and “People’s United Bank.”...The fact that Defendant seeks to enjoin the use of a name which elicits less confusion than the status quo weighs heavily against Defendant’s motion.

Quia Corp. v. Mattel, Inc., 2010 U.S. Dist. LEXIS 68237, *24 (N.D. Cal. 2010)

…In fact, as Defendants point out, Plaintiff’s expert...conceded that when presented the package of the iXL toy (even when side-by-side with [Plaintiff’s] IXL Math advertisement), his survey data indicates confusion was unlikely ([approximately equal to] 8% confusion).”...

Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671, 689, 693-694, & n.29 (W.D. Ky. 2010)

To analyze consumer confusion, one must first identify the relevant pool of consumers. [Plaintiff] contends that confusion of potential buyers of either product is relevant, while [Defendant] insists that only potential buyers of [Defendant’s class of goods] should be considered. The circuits are split on this issue...The Sixth Circuit has addressed the issue only tangentially, when affirming a district court’s criticism of a survey that included too broad a spectrum of purchasers...It cited the Fifth Circuit case with approval when it said “(t)he district court correctly recognized

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that the (confusion) study failed to limit the respondent population to those persons likely to purchase defendant’s products.”... This Court agrees with the Sixth Circuit’s apparent endorsement of the view that the relevant consumers are the potential buyers of the junior user’s product. This limitation is sensible. [Plaintiff] is not harmed if its own consumers believe there is an association between [Plaintiff] and the [Defendant’s class of goods] but would never purchase [Defendant’s class of goods] based on that connection. Therefore, the Court will consider only the confusion of potential...consumers of [Defendant’s class of goods]...

... [Defendant] offered the survey evidence of [its expert] to show that confusion did not exist. [Defendant’s expert] concluded that only two percent of respondents were confused about the two brands. In the Court’s view, the study and its conclusions were flawed in several significant ways...First, the survey -- conducted online using 500 respondents -- created an environment that was dissimilar to that in which a typical consumer would encounter [either Plaintiff’s or Defendant’s products]... Second, [Defendant’s expert] showed the respondents pictures of various liquors with the brand name listed below each product, which would tend to suggest that the products were not affiliated. Third, [Defendant’s expert’s] control group was problematic and may have skewed the confusion results. [n.29 In that group, he replaced the picture of the [Defendant’s product] that included a red wax seal but had no drips. Then he subtracted the number of confused respondents in the control group from the number of confused respondents in the test group. Such an approach ignores the fact that the control group picture could have been confusing also.] Last, [Defendant’s expert] excluded respondents who indicated that the products were related but said that they were “guessing.” In sum, [Defendant’s expert’s] study was neither useful nor persuasive.

The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719, *23-*28 & nn.17-19 (D. Md. 2010)

[Plaintiff’s expert]...was retained...to determine the extent to which the SECRETS mark is likely to cause confusion with the SEACRETS mark...[Plaintiff’s expert] performed an Internet-based consumer confusion survey that targeted people who had “visited an adults-only resort in the Caribbean or Mexico in the past 12 months or would be likely to do so in the coming 12 months”--i.e., potential Secrets patrons... Participants were divided into a “test” group and a “control” group...The test group was shown web pages from Seacrets and Secrets and were asked if they believed they were operated by the same company or were otherwise affiliated...The control group survey was similar in all respects except that the SECRETS mark on the Secrets web pages was changed to “SEA CREST.”

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[Defendant] argues that [Plaintiff’s expert] failed to apply industry standards in designing and implementing the survey; thus, his report and testimony should be excluded. “Survey evidence is generally admissible in cases alleging trademark infringement under the Lanham Act.”...“While there will be occasions when the proffered survey is so flawed as to be completely unhelpful to the trier of fact and therefore inadmissible, such situations will be rare.”...Usually, objections based on flaws in the survey’s methodology are properly addressed to the trier of fact...“Unlike novel scientific theories, a jury should be able to determine whether asserted technical deficiencies undermine a survey’s probative value.”... [Defendant] argues that the [Plaintiff’s expert’s] Report is inadmissible because (1) the “universe” of the survey was incorrectly defined; (2) the control stimulus was improper; (3) confusion as to sponsorship was not measured; and (4) there was no validation of the survey. [n.17 The applicable professional standards for survey research are discussed in Shari Seidman Diamond, “Reference Guide on Survey Research,” in Reference Manual on Scientific Evidence 229-276 (2d ed. 2000)] These arguments relate to alleged technical deficiencies of the Report and are properly addressed to the trier of fact. [n.18 [Defendant’s] argument that the universe of the survey participants was improperly defined appears not only to challenge the survey’s reliability but also its relevance. [Defendant] argues that because it has alleged “reverse confusion,” the proper universe was potential Seacrets patrons and that because [Plaintiff’s expert] surveyed only potential Secrets patrons, the report should be excluded. Although a survey intended to measure reverse confusion should be directed to the senior user’s customer base, see 6 McCarthy, § 32:159, [Plaintiff’s expert’s] failure to conduct such a survey does not render the Report irrelevant. [Defendant] is also claiming infringement based on “forward confusion,” and [Defendant] has appealed the TTAB’s finding of forward confusion. The Report is relevant to those claims.] The issues [Defendant] raises are straightforward, and, with the aid of cross-examination and [Defendant’s] rebuttal witness, a jury will be able to determine whether the asserted technical deficiencies undermine the Report’s probative value. [n.19 The Court recognizes that the flaws (Defendant) notes are potentially serious, but even assuming the accuracy of (Defendant’s) criticisms, “[v]igorous cross examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attaching shaky but admissible evidence.” Daubert, 509 U.S. at 596.] The clarity of the issues also diminishes any risk of prejudice or jury confusion. There being no other objection to the admissibility of the Report, [Plaintiff] has shown by a preponderance of the evidence that the report is relevant and reliable. Accordingly, [Defendant’s] motion will be denied.

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Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d. 1148, 1154-1155 (D. Nev. 2010)

...The survey’s purpose was “to determine whether potential purchasers of graphic or screened T-shirts are likely to mistakenly believe that the heirs, estate or agents of Robert Nesta Marley (‘Bob Marley’) are the source or the sponsor of, or are affiliated with, [Defendant’s] T-shirts bearing Bob Marley’s image.”...[Plaintiff’s expert] conducted 509 face-to-face interviews with potential graphic t-shirt purchasers...[Plaintiff’s expert] split the group into a control group, which was shown a fictitious [Defendant’s] t-shirt bearing the image of an unknown African-American male with dreadlocks, and a test group, which was shown an actual [Defendant’s] t-shirt bearing Marley’s image...Both t-shirts contained the [Defendant’s] neck label...

... ...[The] results led [Plaintiff’s expert] to conclude that forty-two percent of respondents in the test group mistakenly believed Marley, his heirs, or the person on the shirt were the source or sponsor of the t-shirt...The comparable percentage for the control group was twenty-two percent...[Plaintiff’s expert] thus concluded that twenty percent of the test group was confused as to source of the actual [Defendant’s] t-shirt because it bears Marley’s image...[Plaintiff’s expert] opined there is a likelihood of confusion as to the source or sponsor of the [Defendant’s] t-shirts due to the use of Marley’s image thereon...

Bridgestone Firestone No. Amer. Tire, LLC v. Federal Corp., 2010 TTAB LEXIS 294, *23-*26, *28 (T.T.A.B. 2010) This opinion is not a precedent of the T.T.A.B.

Survey evidence is circumstantial evidence of actual confusion...Opposers submitted a likelihood of confusion survey...[Opposers’ expert] testified that the survey showed that there is a 29.9% level of confusion between the mark MILANZA and the marks POTENZA, TURANZA and DUELER...

However, there is a problem with the survey format that affects its probative value. The relevant survey instructions are set forth below.

All respondents were first handed 3 blue cards, one

displaying the name DUELER, one the name POTENZA, and one the name TURANZA. Respondents were informed that the names on the blue cards are 3 models of automobile tires made by the same tire company.

After the blue cards were put out of sight, respondents were handed a white card containing one of four other tire model names, either MILANZA, EAGLE, ZEON, or PILOT. Respondents were then asked whether or not they thought the

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tire model on the first white card is made by the same company as, or by a company that is connected or affiliated with, the tire company that makes the tire models listed on the blue cards. ... The first white card was then taken back and respondents were given a second white card containing another of the above-mentioned tire model names. Respondents were identically questioned about the name on the second white card, and this process was repeated until respondents had been separately shown and questioned about each of the four tire model names, Milanza, Eagle, Zeon, and Pilot...

As indicated previously, the record does not support the existence

of an “NZA” suffix family of marks. There is no pattern of advertising, promotion or use that draws attention to the “NZA” suffix. However, in the survey, the respondents were shown TURANZA, POTENZA and DUELER and told that these marks were owned by one company and then asked whether the control marks and MILANZA were associated or affiliated with the owner of the first three marks. By telling the respondents that TURANZA, POTENZA and DUELER were owned by the same company, [Opposers’ expert] planted the seed that the “NZA” suffix was significant and, therefore, it influenced respondents by stating the marks were related and suggesting that one or more of the marks shown later might also be related. There was no basis to state that TURANZA, POTENZA and DUELER were related in the minds of the relevant consumers. In other words, the survey format led the respondents to the desired response that MILANZA was associated or affiliated with the company that owns the TURANZA, POTENZA and DUELER marks.

... In view of the foregoing, we find that the opposers’ likelihood of confusion survey has little probative value.

THOIP v. Walt Disney Co., 690 F. Supp. 2d 218, 219, 222-223, 236-238, 240-241 (S.D.N.Y. 2010)

...I conclude that [Plaintiff’s] survey is inadmissible and [Defendant’s] survey is admissible.

... [Plaintiff’s expert] conducted a two-room “sequential array” survey in which respondents were shown, in room one, a [Plaintiff’s] shirt, and, in room two, an array of five shirts including an allegedly infringing [Defendant’s] shirt (or control shirt) and four non-infringing “filler” shirts...Each respondent participated in one of eight different cells...

... ...a respondent was shown in room one a specific [Plaintiff’s] shirt and was told to look at it as if deciding whether to purchase it...When the

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respondent was finished looking at the shirt, the shirt was removed from view and the interviewer asked some unrelated questions intended to clear short-term memory of the [Plaintiff’s] shirt. The interviewer then escorted the respondent into a second room in which she was shown the five-shirt array...The interviewer instructed the respondent to look at the shirts as if considering whether to purchase any of them... When the respondent finished looking over the array, the interviewer asked her a series of questions to determine whether she thought one or more of the shirts in the array emanated from, was associated with, or was permitted by [Plaintiff]...For instance, a respondent was asked: “Do you think one or more of these products is put out by the same company that put out the shirt I showed you earlier or that none of these products is put out by the same company that put out the shirt I showed you earlier or don't you know?”...

... Based on all of the expert testimony and reports and my review of

the academic literature and case law, I conclude that the [Plaintiff’s expert’s] Survey did not sufficiently approximate the manner in which consumers encountered the parties’ products in the marketplace. When ascertaining whether a survey methodology sufficiently simulates marketplace conditions, the focal point must be the specific products tested by the survey. [Plaintiff] has not shown a reasonable likelihood that consumers would have proximately encountered the specific pairs of shirts tested by [Plaintiff’s expert]...

By contrast to [Plaintiff’s] failure to establish that the specific pairs tested in the [Plaintiff’s expert’s] survey were to be found in close proximity in the marketplace, [Defendant] has demonstrated that [Plaintiff’s expert’s] choices did not reflect the realities of the marketplace...

... Another aspect of [Plaintiff’s expert’s] methodology caused his

survey to further depart from actual marketplace conditions. The shirts used in the survey did not bear the neck labels and hang tags that would have been attached to the shirts in the marketplace...

... ...based on all of the foregoing discussion, I conclude that the

[Plaintiff’s expert’s] survey failed to sufficiently replicate the manner in which consumers encountered the parties’ products in the marketplace which severely diminishes the reliability and probative force of this survey.

Not only did the [Plaintiff’s expert’s] survey fail to approximate marketplace conditions, it also suffers from another major flaw – it did not have an effective control. A survey designed to estimate likelihood of confusion must include a proper control...

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[Plaintiff’s expert’s] control was a shirt depicting the same [Defendant’s] character image as an allegedly infringing shirt but without any words. [Defendant] argues that these control shirts, because they contained no words, were too dissimilar to the test shirts such that they were not an effective control...

... Because the [Plaintiff’s expert’s] survey failed to replicate actual

marketplace conditions in which consumers encountered the products at issue here and failed to use an adequate control, it is not a reliable indicator of consumer confusion. Accordingly, the [Plaintiff’s expert’s] survey is inadmissible.

Hansen Beverage Co. v. Cytosport, Inc., 2009 U.S. Dist. LEXIS 12058, *46 (C.D. Cal. 2009)

…The Court need not apply a categorical rule about percentages and its relationship to the likelihood of consumer confusion. Rather, the Court finds that a 12.5% net confusion rate (a rate that is based on both parties’ evidence), though not independently sufficient to show consumer confusion, informs the Court of likelihood of consumer confusion…

Sara Lee Corp. v. Sycamore Family Bakery Inc., 2009 U.S. Dist. LEXIS 100554, *12-*15 (D. Ut. 2009) (Likelihood of Confusion)

…[Plaintiff] has presented evidence of a likelihood of confusion via a product “line-up” survey of 660 Utah residents…Adjusting for the control group, the survey found that between 33.8 and 44.6 percent of Utah bread purchasers are likely to be confused and falsely believe that Defendants’ SYCAMORE FAMILY BAKERY products are either made by [Plaintiff] or connected or affiliated with [Plaintiff]...Defendants did not offer any competing survey evidence…

To counteract the likelihood of confusion, Defendants propose affixing a disclaimer sticker to their packaging that would state that the product is not associated with GRANDMA SYCAMORE’S. Disclaimers, however, are generally disfavored and the reference to GRANDMA SYCAMORE’S could actually cause additional confusion to a casual observer. The Tenth Circuit has adopted a very demanding standard when a defendant seeks to avoid an injunction for trademark infringement by using a product disclaimer that disavows any association with the plaintiff’s products. Under this standard: “The proponent of a disclaimer bears a ‘heavy burden…to come forward with evidence sufficient to demonstrate that any proposed (disclaimer) materials would significantly reduce the likelihood of consumer confusion.’”…

… Defendants have submitted no evidence nor offered any argument to meet their heavy burden of proving how or why a disclaimer sticker

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would avoid the consumer confusion proven by Plaintiff. This fact alone requires the Court to deny this form of relief...

The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 2009 U.S. Dist. LEXIS 82980, *24-*28, *30, *56-*57 (D. S.D. 2009)

[Plaintiff] hired [a survey expert] to conduct a survey to address the likelihood of confusion between [Defendant] and [Plaintiff]…The…study was conducted by telephoning a random sample of households located within a ten-mile radius of [Plaintiff’s] main office, and asking to speak to the person in the household 18 years of age or older who would have the next birthday. That household member was then asked if he or she currently had accounts, such as checking or savings accounts, a certificate of deposit, mortgage or loan at any financial institution…

The questionnaire…was administered to a test group and a control group. The test group was questioned regarding an advertisement sponsored by [Defendant], which included its full name and circle 1 logo. The control group was questioned regarding an advertisement sponsored by the First Bank & Trust…with branches in Sioux Falls…The survey was administered under double-blind conditions.

If a potential respondent agreed to participate in the…study he or she was sent a sealed envelope containing either the test or control envelope and instructed not to open the sealed envelope until recontacted by telephone. When recontacted by telephone, respondents were asked to open their envelope and look at the advertisement as long as they would if reading a newspaper or magazine…

…After subtracting the survey noise, [Plaintiff’s expert] reported what he characterized as a conservative measure of confusion of 19%.

Defendants hired [an expert] to conduct its survey…The methodology in the [Defendant’s expert’s] survey consisted of one-room in-person interviews at the offices of a Sioux Falls market research company during March and April of 2006. The respondents were recruited and screened over the telephone and paid $ 25 to drive to the market research company offices to complete a 10-minute double blind survey… The respondents were shown a display of names of test and control banks, and asked whether they perceived any of the banks in the display as being connected to or affiliated with each other. Half of the respondents saw a display with five names in it, and half of the respondents saw a display with an additional sixth name in it…

… [Defendant’s expert] reviewed the responses and reported 13%

confusion…concluded that 13% confusion was not significant evidence of likelihood of trademark confusion…also opined that given the care people show in selecting a bank, even where there is an initial misunderstanding of the connections between banks, people are more likely to correctly

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identify a bank before creating or expanding a relation as compared to the selection of another product or service.

… The closer a survey method mirrors the situation in which an

ordinary consumer would encounter the trademark, the greater the weight that should be given the survey results…The [Plaintiff’s expert’s] survey, which employed bank advertisements, more closely resembled the market conditions at issue than did the methodology of displaying a series of cards as was utilized in [Defendant’s expert’s] survey…

The [Plaintiff’s expert’s] survey…resulted in a reported measure of confusion of 19%. [Defendant’s expert’s] survey…resulted in a reported measure of confusion of 13%, which [Defendant’s expert] concluded was not significant evidence of likelihood of trademark confusion. However, in a case in which the Eighth Circuit upheld the denial of a request to modify injunctive relief, in which the survey evidence produced a range of confusion from 11% to 49%, the Eighth Circuit stated, “The lower figure itself is not an insignificant percentage.”…

Re/Max Int’l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356, *50-*52, *55-*58 (S.D. Tex. 2009)

To help establish likelihood of confusion, a plaintiff may present survey evidence…[In this case, Plaintiff] has offered a survey… of 225 individuals in the Houston metropolitan area over 18 years of age and either using, recently having used, or considering the use of a real estate agent or broker to purchase or sell a home…In this survey…individuals were shown a picture of [Defendant’s] red-over-white-over-blue yard sign pitched in front of a house, with “Trend Setter Realty” written across the front in large typeface…The survey asked a series of open-ended questions regarding what company was being promoted or advertised by the sign…Of those participating, 25.3% stated either that: (I) RE/MAX was the company being promoted or advertised by the sign…; (ii) the company being promoted or advertised by the sign was affiliated or connected with RE/MAX…; or (iii) the company being promoted or advertised by the sign would have to get permission or approval from RE/MAX to use the sign…The survey also asked the same questions of a control group of…individuals shown a modified Trend Setter sign with the red and blue bars removed but otherwise unchanged…Only 2.7% of these individuals mentioned RE/MAX as the company being promoted by the sign…

… First, the defendants point out that the survey only shows a 25.3% confusion level and “also unmistakably reveals that 74.7% of the individuals show[n] (sic) the unmodified sign did not believe the company being promoted was RE/MAX.”…This argument is unpersuasive…courts

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have upheld the finding of a likelihood of confusion based on survey results showing that as few as 10% of the respondents were confused… The defendants next argue that the survey fails to take into account the reality of real estate transactions…that a person buying a “big ticket” item such as a house would “ordinarily be expected to be a more careful buyer than the impulse purchaser or the purchaser of a relatively inexpensive item.”… The defendants’ argument that even if consumers are initially confused about the source of the services, they are no longer confused at the point of sale, does not diminish the weight to be given the survey…“Actual confusion that is later dissipated by further inspection of the goods, services, or premises, as well as post-sale confusion, is relevant to a determination of a likelihood of confusion. ‘Infringement can be based upon confusion that creates initial consumer interest, even though no actual sale is finally completed as a result of the confusion.’”…

Tokidoki, LLC v. Fortune Dynamic, Inc., 2009 U.S. Dist. LEXIS 65665, *21-*23 (C.D. Cal. 2009)

…The survey conducted by [Plaintiff’s] expert witness…does not establish that consumers were likely to be confused as to the source or affiliation of [Defendant’s] shoes…

…The survey was so leading and unrealistic that it did not measure any likelihood of real world confusion. [Plaintiff’s expert’s] survey was essentially an artificial matching game in which respondents were shown two products in succession and asked whether those two products were somehow connected…

…The “control” chosen was inadequate to screen out the high levels of “noise” expected from a survey that is so leading…

…The leading nature and lack of realism of [Plaintiff’s expert’s] survey was exacerbated by [the] use of [Plaintiff’s] products that were very atypical…and did not give the respondents the kind of exposure to [Plaintiff’s products] that they would have if exposed to [Plaintiff’s] products in the real world.

…The instructions and screening questions emphasized to respondents a connection between the shoes and hats and t-shirts that would have tended to bias the respondents to assume that the products probably were coming from the same or related companies.

…There were defects in the “universe” (consumers whose opinion would be relevant to the survey) that was used for the survey. By requiring that a survey participant be a potential purchaser of both [Plaintiff’s] and [Defendant’s] products, [Plaintiff’s expert] excluded a significant portion of the relevant universe -- people who would only be [Defendant’s] customers. Also, [Plaintiff’s expert’s] focus on geographic regions in which [Plaintiff’s] sales are greatest was also inappropriate.

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Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS 63774, *19 (W.D. Ark. 2009)

[One of the] problem[s] with [Plaintiff’s] survey is lack of a control…

Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051, 1075-1076 & n.10 (E.D. Cal. 2009)

…[Plaintiff] submits a consumer survey which it commissioned with respect to the likelihood of confusion between the MUSCLE POWER(R) and MUSCLE MILK(R) marks. The consumer survey comprised a mall intercept survey of 419 respondents at 12 mall research facilities across the country. 208 respondents were assigned…to a Test Group, and the other 211 respondents were assigned to a Control Group. According to the consumer survey, approximately 51.9% of those surveyed answered that the MUSCLE POWER(R) product was made by the same company that makes MUSCLE MILK(R) or is connected or affiliated with the same company. Within the Control Group, 26.5% of those surveyed responded that the control product was made by the same company that makes MUSCLE MILK(R) or is connected or affiliated with MUSCLE MILK. Subtracting the Control Group from the Test Group resulted in a net confusion level of 25.4% between the MUSCLE POWER product and the MUSCLE MILK(R) product… …this court as well as other circuit courts have accepted survey results well below the 25% net confusion…[n.10 Notably, while defendant submits a declaration by an expert who criticizes plaintiff’s survey, defendant did not conduct its own survey despite adequate time to do so…]…

Mary Kay, Inc. v. Amy L. Weber, 601 F. Supp. 2d 839, 849 (N.D. Tex. 2009)

The defendants also object to the methodology of [Plaintiff’s expert’s] survey…They contend that the control website [Plaintiff’s expert] used was improper, that the question was leading, and that distinction between the control website and touchofpinkcosmetics.com is not the “key characteristic” being tested…However, technical inadequacies in a survey, “such as the format of the question or the manner in which it was...taken,” bear on the weight of the evidence, not its admissibility…The court finds that the errors the defendants complain of are the type of methodological flaws best weighed by the jury.

In sum, the court will consider some of the results of [Plaintiff’s expert’s] survey, and will look, especially, to the interviewees’ explanations of their confusion. The court will not consider, or allow the jury to hear, the bald assertion that forty five percent of interviewees were confused…Only some of that confusion is legally relevant…

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Componentone, L.L.C. v. Componentart, Inc., 2008 U.S. Dist. LEXIS 87066, *78-*81 (W.D. Pa. 2008)

…Although defendants’ argument that many grounds exist on which the Court could find [Plaintiff’s expert’s] survey fundamentally unsound is strong, the Court will focus on [Plaintiff’s expert’s] choice of stimuli.

A survey is only useful as evidence of actual confusion if it replicates the conditions in which instances of actual confusion, whether of the “source” or “initial interest” variety, would occur…[In this product category, potential purchasers] generally research a product before making a purchase…In order to conduct this research, [potential purchasers] typically look at the producer’s website, check a reseller…or search for products through Google or other web search sites…The survey’s stimuli did not replicate the parties marks as they would be encountered in any of these situations in which a potential purchaser would encounter the parties’ products or services. Instead of using screen shots of the parties’ websites, common Google searches potential purchasers would use, or…other resellers’ product listings, [Plaintiff’s expert] presented the parties’ marks on a plain background in large block letters [Compare to the likelihood of confusion survey design preferred by the Trademark Trial and Appeal Board. See, e.g., OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274, *41; Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp., 35 U.S.P.Q.2d 1125, 1132 n.19 (T.T.A.B. 1995); Marshall Field & Co. v. Mrs. Field’s Cookies, 25 U.S.P.Q.2d 1321, 1332 (T.T.A.B. 1992); and Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 U.S.P.Q.2d 1445, 1459 (T.T.A.B. 1991).] followed by descriptions of the companies [Plaintiff’s expert] gathered from [Defendant’s] website and a listing of sponsors (not vendors) for a trade show.

[Plaintiff] fails to present evidence demonstrating that potential purchasers or other third parties encounter the parties’ marks in the manner presented in the stimuli of [Plaintiff’s expert’s] survey… The Court finds that the stimuli [Plaintiff’s expert] employed are completely divergent from the conditions that potential purchasers encounter in the parties’ marketplace…Since the survey failed to replicate market conditions, the Court affords it extremely minimal weight as circumstantial evidence of actual confusion…

Anheuser-Busch, Inc. v. VIP Products, LLC, 2008 U.S Dist. LEXIS 82258, *6, *7 n.5, *8, *18-*19 (E.D. Mo. 2008)

…The interviewee was shown either the test product…or a control product [n.5 The control product is used in confusion surveys to make certain that any confusion between the products at issue is not caused by

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an unrelated factor. In this case, the focus was on any confusion between “Buttwiper” and “Budweiser” and whether that confusion was caused by something unrelated to the “Budweiser” mark or trade dress. Therefore, to be effective the control product could not share any characteristics with the test product that was being tested…In the instant case, the control product had a different color scheme than the test product, the name was changed to something that did not have a similar sound, and the label design was modified…]…

… In the instant case, the survey was conducted in a technically

proper manner using relevant and non-confusing questions…The 327 participants in the survey included only those individuals who, within the next six months, were likely to purchase a dog toy. They were able to view “Buttwiper” and a control item for as long as they wished…Examples of core questions are as follows: “What company or companies do you think makes or puts out the product you just saw?”…; “Do you think that the company that makes or puts out the product you just saw puts out any other products or brands?”…; “What other products or brands do you think are put out by that company?”…; “Whether or not you know the name of the company that makes or puts out the product you just saw, do you think that company puts out any other products or brands?”…; “Do you think that the company that makes or puts out the product that you just saw does or does not have a business connection or business affiliation with any other company or brand?”…; “Do you think that the product that you just saw is or is not made or put out with the approval or sponsorship of any other company or brand?”…

Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376, *20-*26 (D. Minn. 2008)

In addition, [Plaintiff] advances the related argument that should laches otherwise be applicable, laches should not bar injunctive relief because the public maintains an interest in being free from confusion in instances of trademark infringement…Courts considering this factor typically will decline to apply laches to bar injunctive relief only when some elevated likelihood of confusion is demonstrated… In this case, the evidence of likelihood of confusion consists of the similarity between the product’s names, the fact that both Cristal and Cristalino are sparkling wines that are sold nationwide…In addition, [Plaintiff] submitted the results of a survey indicating some confusion among potential consumers…The results indicated that 6.9% of respondents believed the bottle of Cristalino was the same brand as the bottle of Cristal, 9.2% believed Cristal and Cristalino were produced by the same company, 4.6% believed the Cristal and Cristalino were produced by affiliated companies, and 2.3% believed that permission from the maker of Cristal was required in order to produce Cristalino.

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On this record, the Court concludes that confusion between Cristalino and Cristal is not inevitable and the likelihood of confusion is not so high as to prevent application of laches to [Plaintiff’s] request for injunctive relief and that, on that issue, no genuine issue of material fact remains…While [Plaintiff’s] survey is probative of a possibility of confusion, the Court concludes that, in light of the other available evidence, a higher confusion rate on this survey would be required to establish an issue of material fact as to the existence of “inevitable confusion.”

Citizens Banking Corp. v. Citizens Financial Group, Inc.¸ 2008 U.S. Dist. LEXIS 36800, *26-*28, (E.D. Mich. 2008)

Plaintiff's expert…executed four surveys, and analyzed 22 reported incidents of actual confusion… In general, the appropriate resolution for a flawed survey is to address its weight and credibility, and not to exclude it… The most significant error was the choice of control variable. Described by [Plaintiff’s expert] as a “naturally occur[r]ing control variable” the term “CHASE” bears very little resemblance to the marks at issue, in contrast to the guidance on which [Plaintiff’s expert] said he relied…“In designing a control group study, the expert should select a stimulus for the control group that shares as many characteristics with the [test] group as possible, with the key exception of the characteristic whose influence is being assessed.”… [Plaintiff’s expert] admitted on the stand at trial that a bad control selection could invalidate a survey...

Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16, *41-*46 (T.T.A.B. 2008)

…the likelihood of confusion survey conducted on behalf of petitioner…was based on the mark in petitioner’s registration. [Petitioner’s expert] conducted a mall intercept survey in 15 cities among 396 people aged 18 or older who had purchased fishing, hunting, camping, or other outdoor gear in the past 12 months…Respondents were first shown the “Bass Pro Shops Sportsman’s Warehouse” logo. Then, respondents were exposed to an array of six logos that they would be likely to encounter in shopping for outdoor gear…Among these six logos was the logo put out by Sportsman’s Warehouse, Inc. To assess potential confusion between the petitioner’s and the registrant’s marks, all survey respondents were asked whether any of the six logos in front of them either (1) is put out, (2) needed permission or approval, or (3) is affiliated with the company that puts out the logo that they had seen earlier (“Bass Pro Shops Sportsman’s Warehouse” logo). Adjusting for the control cell, over 35% of the outdoor gear purchasers felt that the Sportsman’s

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Warehouse, Inc.’s logo was put out by the same company that put out the “Bass Pro Shops Sportsman’s Warehouse” logo. In addition, adjusting for the control cell, 30% of outdoor gear purchasers either felt that the Sportsman’s Warehouse, Inc.’s logo (1) is put out, (2) needed permission or approval, or (3) is affiliated with the same company that puts out the “Bass Pro Shops Sportsman’s Warehouse” logo. In addition, respondents were asked their reasons for selecting the Sportsman’s Warehouse, Inc. logo from the array. [An] analysis revealed that 22% of the respondents who had indicated that the Sportsman’s Warehouse, Inc. logo and the “Bass Pro Shops [Sportsman’s] Warehouse” logo had a common source or were somehow connected mentioned that similarity of the names [was] the reason… It was not surprising that a significant segment of the survey respondents believed that there was some affiliation between petitioner and respondent. Because the only similarity between any of the 7 marks in the survey was that petitioner’s mark and respondent’s mark both feature the term “Sportsman’s Warehouse,” this would suggest to some survey respondents that they should find an affiliation between those two marks. For this reason, we find the survey results to be of little probative value.

* To the extent that petitioner has established actual confusion, it is confusion resulting from the common use of this merely descriptive term for which petitioner has not acquired distinctiveness. Thus, petitioner assumed this risk in using a descriptive term as part of its mark.

Purl NYC, LLC v. Ellen Rodgers, 2008 T.T.A.B. LEXIS 672, *9-*10, *44 & n.20 (T.T.A.B. 2008) This opinion is not a precedent of the T.T.A.B.

We consider all of this evidence, which go to the factors of the fame of opposer’s mark, the conditions of purchase, and whether consumers are confused, to be properly part of opposer’s case-in-chief. The fact that opposer is attempting to make of record a survey as part of rebuttal testimony highlights how unfair it would be to treat this evidence as proper rebuttal. It is obvious from the trademark cases involving surveys that no survey is perfect, and that problems with surveys can range from minor to so major that they make the survey of no probative value whatsoever. Allowing a plaintiff to wait until the rebuttal period to submit survey results would deprive the defendant of an opportunity to challenge the methodology or results of the survey by the testimony of its own witnesses, or to submit a survey countering the evidence of the plaintiff’s survey. Opposer itself recognizes that it is “well established that challenges to survey methodology go to the weight given the survey, not its admissibility,”…but if opposer were permitted to submit a survey as part of its rebuttal testimony, applicant would not have the opportunity to challenge the survey methodology with the testimony of its own

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witnesses. Applicant’s objections to the rebuttal testimony are well taken, and none of the rebuttal testimony has been considered…

… Finally, opposer has asserted that there is evidence of actual confusion. However, there is no evidence of record that shows such confusion. [n.20 As indicated supra, the survey which opposer relies on to show purported actual confusion has not been considered.]…

Meier’s Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., 2008 T.T.A.B. LEXIS 678, *1, *10-*13, *15 (T.T.A.B. 2008) This opinion is not a precedent of the T.T.A.B.

…(“petitioner”) seeks to cancel the registration of…(“respondent”) for the mark MEYER VINEYARD for “wine.”…

… …Respondent…relies heavily on a shopping mall intercept survey and expert opinion thereon to argue that there is no likelihood of confusion between the parties’ marks.

… …we consider the survey, which allegedly shows that there is no likelihood of confusion between the two marks, to be so seriously flawed that it fails to raise a genuine issue with respect to the likelihood of confusion between the parties’ marks.

… …First, there is a problem with the stimulus, in that the survey

respondents were shown respondent's entire wine bottle, including the full label, rather than just the mark. The Board has held that surveys, such as respondent’s, which embellish the stimulus with features that are not directly involved in the determination of likelihood of confusion, have limited probative value. See, e.g., Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1132 n.19 (TTAB 1995); Marshall Field & Co. v. Mrs. Field’s Cookies, 25 USPQ2d 1321, 1334 (TTAB 1992); and Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc., 1 USPQ2d 1445, 1459 (TTAB 1986)(“a labeled ... multivitamin tablets jar would have introduced irrelevant matter, thereby destroying any probative value of the survey for our purposes”).

The interviewees were instructed to look at the “bottle” and were then shown a bottle of respondent’s wine bearing the information “Meyer Vineyard 2003 Napa Valley Cabernet Sauvignon” on the label…As a result, the majority of the survey respondents focused on features of the bottle apart from the mark, i.e. the trade dress comprising the color and shape of the bottle and label, and other data on the bottle such as the geographic origin of the product (i.e. Napa Valley)…

… …the survey did not include probing questions such as, “What makes you think so?”…

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GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052, *26-*28, (S.D.N.Y. 2008)

Although “actual confusion need not be shown to prevail under the Lanham Act,”…“there can be no more positive or substantial proof of the likelihood of confusion than proof of actual confusion”…Despite the obvious importance of this Polaroid factor…[Plaintiff] has done nothing to fill this evidentiary gap. Defendants, in contrast, commissioned a survey of 200 potential purchasers of their…products, which “documented a total absence of consumer confusion.”…Although [Plaintiff] argues that the survey contains several methodological flaws, its objections are convincingly refuted in a reply affidavit filed by defendants’ expert…In particular, [Defendants’ expert] explains that his survey utilized the “Eveready” procedure…which has been approved by courts and described by a leading commentator as “a now-standard survey format…The lack of any consumer confusion reported in [Defendants’] survey, coupled with [Plaintiff’s] failure to perform its own consumer survey…or adduce any other evidence of actual confusion, clearly tip this Polaroid factor in defendants’ favor.

adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1226 - 1227 (D. Or. 2007)

[Defendant] seeks an Order striking both…Rule 26 expert report[s] of [Plaintiff’s expert]. [Defendant] also seeks an order barring [Plaintiff’s expert] from testifying at trial. [Defendant] argues [Plaintiff’s expert’s] likelihood of confusion surveys, which focused on [Plaintiff’s] Superstar Trade Dress infringement claims, cannot be used to support [Plaintiff’s] Three-Stripe trademark infringement claims…[and] that [Plaintiff’s expert] improperly relied on likelihood of confusion surveys he conducted for [Plaintiff] in other cases involving potentially infringing third-party uses of two and four-stripe designs. In essence, [Defendant] argues that because [Plaintiff’s expert] did not conduct a likelihood of confusion survey for each of the accused shoe lots at issue, his expert reports must be stricken with respect to all of the unreviewed shoes… Where actually surveyed products and subsequently accused products share common and prominent features, a trademark infringement plaintiff need not create new likelihood of confusion surveys for each newly accused product…

Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635, *26-*27 (C.D. Cal. 2007)

A significant number of respondents explained their confusion with answers, such as “design” or “style,” that could refer to the checkerboard design. However, the study’s poor choice of control

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precludes any inference that they were referring to the checkerboard design. Instead of using a control shoe that resembled the Smooth Rider in every respect except its use of a checkerboard design, the study employed a control shoe that differs from the Smooth Rider in a number of significant respects…The Smooth Rider is a slip-on shoe with a flat heel, whose profile significantly resembles Vans’ “classic slip-on shoe.”…The Urbantrack Tao is a lace-up shoe resembling a running sneaker, with a curved heel and a grooved tread…There are a number of elements of “style” or “design” shared between the Smooth Rider and the “classic slip-on” that are not incorporated in the control, and that could explain respondents’ confusion…The control was thus useless in eliminating explanations for respondents’ confusion other than the checkerboard design.

Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320, *9, *17-*18 n.8, *24-*25 (S.D.N.Y. 2007)

Here, because [Plaintiff] is claiming that “reverse” confusion exists, the relevant survey for purposes of demonstrating actual consumer confusion is that of [Plaintiff’s] universe of prospective purchasers…

* In addition to failing to approximate actual marketplace conditions, the survey’s back-to-back design was impermissibly leading. After viewing the seriatim display of non-competing products that few if any respondents actually would have encountered in close physical or temporal proximity in real life, the respondents were given multiple choice questions in which they were asked whether they believed a connection, as to source, business relationship, or sponsorship, existed between the companies whose marks the respondents had just seen. Rather than measure any actual confusion, however, these questions were far more likely to generate “demand effects” by suggesting the existence of a connection between the products that the respondents would not have made on their own…(“Demand effect results when the interviewer’s question or other elements of the survey design influence participants’ responses by suggesting what the “correct” answers might be or by implying associations that might not otherwise occur to participants.”) In other words, the mere putting of a question creates the impression of a relationship.

* n. 8 The percentage of confusion occurring among participants in the control group is subtracted from the percentage of confused participants in the test group, pursuant to standard protocol, as “noise” that should be discarded. “In an experiment or statistical study, the ‘noise’ is the variation in the data being collected that is not believed to be caused by the variables being tested.”…

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H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755, 758, 762 (7th Cir. 2007)

…A consumer survey conducted by [Plaintiff’s] expert suggests that twenty-seven percent of motorcycle riders who view [Defendant’s] promotional materials believe that [Plaintiff] promotes or approves of [Defendant’s] cruises. The same survey suggests that much of this confusion stems from [Defendant’s] use of the word “hog” and the word’s association with the Harley Owners Group.

* Having determined that [Plantiff’s] “HOG” and “H.O.G.” marks are protectable, we need not discuss at length the issue of likelihood of confusion, for [Plaintiff] has offered evidence of actual confusion in the form of a survey and questions asked by [Defendant’s] customers…And evidence of actual confusion (so long as it is not de minimis) ordinarily is sufficient to create a genuine issue of material fact on the issue of likelihood of confusion…

Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220, 227-228 (E.D.N.Y. 2007)

…Plaintiff has neither conducted nor submitted the results of any consumer survey. While not bearing any burden on this issue, Defendant commissioned and submits the results of a consumer survey…

* Plaintiff has not conducted a consumer survey. Instead, Plaintiff submits an expert report explaining to the court the problems with the Defendant’s survey and asking that the court reject its findings… In consideration of the evidence submitted, the court concludes that there is little evidence of actual confusion. The court reaches this conclusion even if it were to accept each and every one of Plaintiff’s quarrels with the reliability of [Defendant’s] survey…the court notes that Defendant was not required to submit a consumer survey. While Plaintiff commissioned an expert to criticize that survey, it did not conduct a survey of its own. This weighs against Plaintiff’s argument of consumer confusion…

Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 2007 U.S. Dist. LEXIS 29377, 45 n.9, *47-*50 (E.D. Pa. 2007)

n9 Both experts testified at length about whether the survey was designed to measure reverse or forward confusion…Reverse confusion occurs when “the junior user saturates the market with a similar trademark and overwhelms the senior user.”…The only difference between testing for forward and reverse confusion is who should be interviewed: “In a traditional case claiming ‘forward’ confusion, not ‘reverse’ confusion, the proper universe to survey is the potential buyers of the junior user’s goods or services. But in a ‘reverse’ confusion case, it is appropriate to survey

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the senior user’s customer base.” McCarthy § 32:159…The customer base for both products is the same, making the survey probative of both forward and reverse confusion.

… …In the absence of a “why” question (i.e. why did you select that

response), however, the Court finds that neither expert can testify conclusively as to the reasons for the difference in that response rate…Defendants criticized the Plaintiffs’ expert for not asking a “why” question in his survey, but their own survey suffers from the same limitation…

At the same time, the Court also finds that the use of the “American People” control suffers from its own limitations and therefore fails to conclusively demonstrate the absence of a likelihood of confusion between the [Defendants’] and [Plaintiffs’] marks. Defendants’ screening survey for potential survey respondents specifically listed the store “American Eagle” as one of the stores where respondents may have shopped in the last month. As [Plaintiffs’ expert] testified, American Eagle is a popular store that caters to young men and women, and six of the nine malls where [Defendants’ expert] conducted his study had American Eagle stores. Hearing the phrase “American Eagle” and then filling out a survey with a response “American People” is suggestive and could skew the results in favor of “American People.” [Plaintiffs’ expert’s] rebuttal testimony on this point was persuasive, particularly his analysis that respondents who answered “yes” to question 4S on the screening survey, asking whether the respondent had shopped at stores such as Abercrombie & Fitch or American Eagle in the last month, or answered “American Eagle” when asked where they were most likely to purchase clothes, were three and four times more likely, respectively, to select American People as a response than those who did not answer those questions positively…Defendants’ expert himself conceded during his rebuttal testimony that those respondents who were likely to try to “figure out” the right answer might respond to the “American Eagle” cues in the screening survey.

Leelanau Wine Cellars, Ltd .v. Black & Red, Inc., 452 F. Supp. 2d 772, 779-780, 783-784 (W.D. Mich. 2006)

…Initially, participants were screened to ensure that they met the following criteria: (1) 21 years of age or older; (2) must have purchased a regular size bottle (750 ml) of wine that costs between $5 and $14 within the last three months or must be likely to make such a purchase within the next three months; (3) no household member working for a market research firm or an advertising firm, a manufacturer, distributor, or retailer of wine; a bar or restaurant that serves wine; or a store in the mall; (4) must not have participated in any market research survey in the past three

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months; and (5) must be wearing his/her eyeglasses or contacts if normally worn while shopping for wine…

Participants were divided into two groups, a “test cell” and a “control cell.”…The test cell consisted of 203 participants and the control cell consisted of 101 participants. Both groups were first shown an advertisement for [Plaintiff’s] Chardonnay wines…After the participants finished looking at the advertisement, the interviewer put it away out of sight for the remainder of the interview… Participants were then shown a display of five bottles of Chardonnay wines, all from different Michigan wineries. The following wines were present in both the test cell display and the control cell display: Turner Road, St. Julian, Wilhurst, and Zafarana. The fifth bottle in the test cell was Chateau de Leelanau [Defendants’ wine], while the fifth bottle in the control cell was Bel Lago, another winery, like [Plaintiff] and Defendant…

… [Plaintiff’s expert’s] survey is subject to the same criticisms as the

surveys in Weight Watchers, Scheiffelin, and Franklin Resources. That is, the universe is overbroad because a purchaser of a $5 to $14 bottle of wine would, in most instances, be a potential consumer of Defendants’ wine only if the purchaser planned to buy wine from Defendants’ tasting rooms or website or, at the very least, through some winery’s tasting room or website…

… The survey in this case was conducted in a manner that was

substantially at odds with the circumstances under which most consumers encounter Defendants’ wine. As noted above, Defendants’ wine is sold through Defendants’ tasting rooms and website, which offer only one brand of wine -- Chateau de Leelanau. That is, actual purchasers would not be presented with the situation where Defendants’ wine is displayed side-by-side with other wines, and they would be purchasing from a location identified expressly and exclusively with Chateau de Leelanau…

Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F. Supp. 2d 250, 256-257 (S.D.N.Y. 2006)

…plaintiffs presented…consumer surveys that provide strong circumstantial evidence of…confusion…For example, [Plaintiff’s] survey, which used actual specimens of apparel marketed by defendants or their licensees, showed net confusion levels ranging from 23% to 59%…

24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266, 279-280 (S.D.N.Y. 2006)

[Plaintiff offered] evidence of actual confusion with a consumer survey…A control group was shown a television commercial from

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Lifetime Fitness, while a test group was shown a 24 Hour Fitness television commercial…Each respondent was then shown three health club print advertisements, one at a time, in rotated order, and asked whether they thought the health club in the print ad was the same as the one advertised in the television commercial…The print ads were from 24/7 Fitness, Omni Health and Fitness, and New York Health and Racquet Club…

… [Defendant] obtained [an] expert…to criticize [Plaintiff’s expert] Survey…[Defendant’s expert] criticized [Plaintiff’s expert] for choosing Lifetime Fitness as the control group…He said that the control should have been another fitness facility that advertised that it was open twenty-four hours a day…[Plaintiff] argues the control was proper because it is a traditional survey method to use a control that shares characteristics with the stimuli to be compared, except for the characteristic at issue, in this case, the words “24 hour.”…However, the Court finds [Defendant’s expert’s] criticism compelling, especially in light of the fact that a number of 24 Hour’s enforcement actions have ended in agreements as to acceptable uses of the following words, some as trademarks and others as descriptors: “open 24 hours,” “24 hour,” “24 hour a day,” “Fit 24 Club,” “Workout 24/7,” “24/7 Tanning and Fitness,” and “The 24 Hour Gym.”…As conducted, the survey does not measure the amount of confusion between “24 Hour Fitness” and names such as these, or a name such as “All Day Gym,” for that matter, compared to the amount of confusion claimed with “24/7 Fitness.”

OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274, *34-*35, *40-*41 (T.T.A.B. 2006) This opinion is not citable as a precedent of the T.T.A.B.

Applicant commissioned a survey to “determine whether or not there is a likelihood of confusion of source or affiliation among consumers…concerning [Opposer’s] marks WEED-B-GON [and] BUG-B-GON, with [Applicant’s] mark EASYGONE.”…The survey concluded that there was no likelihood of confusion between EASYGONE and WEED-B-GON, and EASYGONE and BUG-B-GON.

… …[Applicant’s expert] conducted two product line-up surveys…

… In the first product line-up - identified as the weed control survey -

one hundred survey respondents were shown two displays of lawn weed killers. The respondents first viewed a container of opposer’s WEED-B-GON. After they finished viewing the container, it was covered. Next, the survey respondents were shown a display of three lawn weed killer containers; EASYGONE, and two control brands, i.e., ADVANCED Lawn All-In-One Weed Killer for Lawns, and WEED STOP Weed Killer for Lawns (“Weed Stop”)…According to applicant, ADVANCED and

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WEED STOP were selected because “they are major brands that have products with the same functions as the WEED-B-GON lawn weed killer product and the EASYGONE lawn weed killer product.”…

… We find that the survey is flawed in that the stimulus used is one

not suited for Board proceedings where the issue in question is the registrability of the mark depicted in the drawing. Specifically, applicant showed respondents containers containing a variety of wording, shapes, colors and trade dress. Applicant’s marks and Opposer’s marks were not displayed prominently, other marks were on the containers, and the marks at issue here were subordinated to other house marks and source indicators, which undoubtedly influenced the responses. Further, Opposer has noted that the “EASYGONE container in each instance is shorter than all three other containers; it is a bright white color as compared to the dark colors of the other three containers; and the EASYGONE containers are formed to make a closed handle, where none of the other three containers are.”…Applicant’s mark is in standard character form, thus the stimulus should also have been in standard character form. See Miles Laboratories Inc. v. Naturally Vitamin Supplements Inc., 1 USPQ2d 1445 (TTAB 1986) (“In the case before us, we have already held that the issue we have to decide concerns only the likelihood of confusion of the terms VIT-A-DAY and SUPER VIT-A-DAY with ONE A DAY, without regard to any special form of lettering or design features which may, in fact, be currently associated with either of those word marks in the marketplace. Accordingly, using the card on which the mark is displayed in block letters was the only appropriate stimulus available to the survey designer.”). See also Carl Karcher Enterprises, Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995). Applicant’s methodology was better suited for a survey for trademark infringement litigation…

Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 20787, *73-*74, *78, *80-*82 (S.D.N.Y. 2006)

…[Plaintiff] principally seeks to show actual confusion through a survey… [Plaintiff] asked [its expert] to design and conduct a consumer study to measure the extent to which consumers, when exposed to either the name Juicy or Juicy Wear in the context of shopping for makeup, may believe that the makeup products come from or are associated with [Plaintiff]. To do so, [Plaintiff’s expert] created three 8 1/2 by 11 inch laminated cards bearing the words Juicy, Juicy Wear, or Glossy Wear…each of these three cards was separately shown in a shopping mall to over 200 teenage and adult females between the ages of sixteen and thirty-nine…who…had purchased both a cosmetics item that costs over $15 and an item of clothing that costs $50 or more, and who had shopped at a major department store…

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… The [Plaintiff’s] survey has no value on the issue of actual confusion because of fundamental flaws in its design. Most significantly, the survey did not replicate the marketplace conditions in which consumers encounter [Defendant’s] products. [Defendant’s] cosmetics are sold at [Defendant’s] counters or department store sections, or over websites, with prominent signage identifying [Defendant] as the seller, and the products as [Defendant’s] products. [Defendant’s] products are also packaged in both boxes and a product container that identify them as [Defendant’s] products…

… The bias created by this faulty design was exacerbated by the choice of the universe of respondents. The pool of respondents was skewed towards a younger population to obtain a higher proportion of respondents who are familiar with [Plaintiff]… Also, by asking an introductory question about clothing…there was a not so subtle suggestion that the survey was connected to clothing in some way. Since [Plaintiff’s expert] included a screening question at the end of the survey to learn whether anyone in the respondent’s household worked for a manufacturer, distributor or retailer of clothing, there was no need to include the introductory question except to plant a suggestion about clothing.

… Although [Plaintiff’s expert] contends that his survey was a test of post-sale confusion…it in fact begins with the statement “Here is something that you might see if you were shopping for makeup and cosmetics in a department store.”…The respondents were asked, therefore, to consider this a point-of-sale survey, and yet the survey design did nothing to replicate the point-of-sale experience.

The survey says as little about post-sale confusion… …This survey is so fundamentally flawed, that it would have been excluded from evidence at a jury trial.

Starbucks U.S. Brands, LLC v. Marshall S. Ruben, 2006 T.T.A.B. LEXIS 54, *36, *37 & n.31, *38 & n.32, n.33, *39 (T.T.A.B. 2006)

…[Opposer’s expert] designed a mall intercept survey involving interviews with two hundred respondents at shopping malls in eight geographically dispersed metropolitan areas.

[Applicant] challenges [Opposer’s] survey results by criticizing the survey’s format…we find that the survey questions are consistent with those accepted in our established precedent on trademark surveys.

This Board has had occasion to review the so-called Ever-Ready…survey format. See Carl Karcher Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125, 1132 (TTAB 1995); and Miles Laboratories, Inc. v. Naturally Vitamin Supplements, Inc. 1 USPQ2d 1445

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(TTAB 1986). We agree with opposers that Questions 1a and 1b of [Opposer’s] survey…parallel the precise formats approved in Ever-Ready and Carl Karcher. n31 (Question 1a): “This is the name of a retail establishment that serves coffee, tea, and other beverages. Just from knowing this, have you formed an opinion about the name of a company that owns this retail establishment?” [Respondents answering Question 1a “yes” were then asked:] (Question 1b): “What is the name of the company?”

Next, we note that consistent with Ever-Ready, Starbucks’ Question 2a…and Question 3a…were designed to elicit responses concerning sponsorship, affiliation, permission and approval. While these types of questions were not expressly addressed in Ever-Ready, a leading commentator…suggests, and court opinions…have found, that affiliation and connection queries are appropriate in light of the specific language of the Lanham Act. n32 (Question 2a): “Do you think the company that owns this retail establishment is connected or affiliated with any other company?” [Respondents answering Question 2a “yes” were then asked:] (Question 2b): “What other company?” n33 (Question 3a): “Do you think the company that owns this retail establishment has authorization, permission or approval from another company to use this name?” [Respondents answering Question 3a “yes” were then asked: (Question 3b): “From what other company?”

Additionally, all these survey questions contain the follow-up question: “What makes you think so?” The answers given to these follow-up questions persuade us that the respondents were not merely guessing.

…given the way in which this survey format carefully follows the Ever-Ready likelihood of confusion survey format, we find that it is reliable and therefore of probative value on the issue of likelihood of confusion herein…

Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 WL 20523, *4, *6 (E.D. Mich. 2006)

…[Plaintiff’s expert] conducted a survey…“to determine whether [Defendant’s] use of POWERHOUSE on its exercise equipment has confused consumers to erroneously think that the exercise equipment is affiliated, connected, or otherwise associated with the Plaintiffs.”…interview[ing] sites [were selected where] there were three or more [of Defendant’s] fitness centers within a twelve mile radius…surveyors interviewed…individuals…age eighteen years or older, who had worked out in a fitness center, club, or gym in the

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preceding five years…Those individuals were brought into a room in which five branded pieces of workout equipment were on display…After the individuals examined the equipment, they were asked “Which, if any, equipment brand that you see in this room do you believe is sponsored by, licensed by or associated with a particular fitness center, fitness club or fitness center chain?”…If the participant identified a particular piece of equipment, he or she was then asked: “What is the fitness center, fitness club or fitness chain?”…

… First, “[i]dentification of the proper universe is recognized as a critical element in the development of a survey.”…In a case where the plaintiff alleges that the defendant’s use of the plaintiff’s marks causes customers to mistakenly think that the defendant’s goods or services are from the same source as or are connected with the plaintiff’s goods or services (referred to as “forward confusion”), “the proper universe to survey is the potential buyers of the junior user’s [i.e. defendant’s] goods or services.”… [Plaintiff’s] survey did not focus on buyers of fitness equipment; rather the population…surveyed was limited to individuals who worked out at fitness centers, clubs, or gyms in the preceding five years. These are individuals who are customers or potential customers of [Plaintiff’s] products and/or services…

… “A survey also is not reliable if it suggests to the respondents an answer that would not otherwise have occurred to them.”…“It is improper to suggest a business relationship where the respondent may previously have had no thought of any connection.”…In this case, [Plaintiff’s survey] asked respondents: “Which, if any, equipment brand that you see in this room do you believe is sponsored by, licensed by or associated with a particular fitness center, fitness club or fitness center chain?” This question clearly led respondents to find, not only a connection or association between the fitness equipment shown and some other product or service, but specifically a fitness center, club, or chain…

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578, *14-*15 (S.D.N.Y. 2005)

…the only evidentiary proffer as to actual confusion of [Defendant’s] product for one offered or sponsored by [Plaintiff] is a minuscule number of responses to one telephone survey item in which respondents were queried as to whether they could “name any company or store that [they] think might offer a product called ‘Charbucks.’”…In response to that question, only 3.1% of the 600 respondents named [Plaintiff] as a possible source of a “Charbucks” product …Particularly in light of the fact that this survey item was administered by telephone and did not present the term “Charbucks” in the linguistic or visual context in which Defendant uses it, this evidence is insufficient to make the actual confusion factor weigh in Plaintiff's favor to any significant degree.

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Missiontrek Ltd. Co. v. Onfolio, Inc., 2005 T.T.A.B. LEXIS 524, *9-*11 (T.T.A.B. 2005) This disposition is not citable s a precedent of the T.T.A.B.

In the present case, the Board finds that defendant has established the absence of any genuine issue of material fact and that it is entitled to judgment as a matter of law… …we find that plaintiff’s survey does not raise a genuine issue of material fact with respect to the similarities of the parties’ respective marks…

… …We observe, too, that the survey, at a minimum, is not based on established or recognized survey techniques; was prepared and administered by a biased party; and was not analyzed in any statistically meaningful way…

Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist. LEXIS 32660. *24-*26 (D. Or. 2005)

…The evidence presented by Starbucks is sufficient to meet its burden or proving that [Defendant’s] use of the “Sambuck’s” mark infringes [Plaintiff’s] registered trademarks. …[Defendant’s] use of the “Sambuck’s” mark need not be likely to confuse a majority of consumers. Rather, the defendant’s mark need only create a likelihood that an “appreciable number” of ordinary consumers would be confused…The percentage of consumers likely to be confused can be in the range of 10 to 15 percent or even lower. …The likelihood of confusion that gives rise to trademark infringement liability need not involve the source or origin of the goods at issue. Rather, the “appropriate inquiry is whether the average purchaser would be likely to believe that the infringer’s product has some connection with the trademark owner.”… …A likelihood of confusion need not exist at the time a consumer makes a purchase decision. Infringement occurs even if the likelihood of confusion terminates before a sale is made by the defendant. “Initial interest” confusion occurs when the defendant uses the mark in a manner that is likely “to capture initial consumer attention, even though no actual sale is finally completed as a result of the confusion.”… …[Defendant’s] use of the “Sambuck’s” mark creates initial interest confusion. Thus, [Defendant] has committed trademark infringement even if, as she claims, consumers who make purchases at her store have “no reason to believe that [it is] related to, or in any way sponsored by,” [Plaintiff] when they finally make a purchase.

M.D. On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563, *18 & n.5, *20-*21 (D. N.J. 2005)

Plaintiff…submitted a survey to show actual confusion…The survey was of 302 people who were employed by personal care physicians, their employment involved submission of medical claims to insurance companies, and the

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submission of those claims was done or prospectively would be done over the internet. The test group was composed of 202 people, and the remaining 100 people composed the control group. [n5 The purpose of the control group is to account for “noise,” that is, any external factors that may improperly influence participants’ opinions. In order to account for noise, the survey questioned participants in the control group about the association between plaintiff's mark and a “fictitious mark, ‘ProxyMed.’”…Any confusion that the control group had would be considered noise because the comparison mark was presumably fictitious, and thus must be attributable to other factors. However, it came to light during the hearing on plaintiff’s motion that ProxyMed is not a fictitious name; it is an actual company that provides electronic claims to healthcare providers… This obviously casts tremendous doubt on the survey’s ability to account for noise.]

… After tallying the responses and contrasting the test group with the control

group,…[Plaintiff’s expert] estimates that approximately 25.7% of the participants expressed that they “thought that the two names…were affiliated or connected in some way because of their same or similar name.”…However, this survey is both procedurally and substantively flawed. First, plaintiff introduced the survey in its reply brief, not its moving brief. This maneuver deprived the defendants of a meaningful opportunity to respond within the normal course. As such, the Court will disregard this “newly minted” evidence…

Second, even if the Court were to consider the survey, it appears to suffer several flaws that render it unreliable, two of which the Court will address at this time. “Survey evidence can sometimes demonstrate evidence of actual confusion but only to the extent ‘that the survey mirrors the real world setting which can create an instance of actual confusion.’” “…Here, plaintiff’s survey does not mirror the “real world setting.” The marks in question identify the sources of web-based programs. And yet, this survey was done over the telephone, participants were not shown the marks, nor were they directed to websites that contained the marks. Thus, any alleged association the participants found between the marks was based on sound alone, and does not address how the marks might be viewed in a commercial setting. By removing the marks from their proper commercial setting, plaintiff unjustifiably skewed the results.

Markwins Beauty Products, Inc. v. Mirage Cosmetics, Inc., No. CV 05-04917, 27-29 (C.D. Cal. 2005)

In considering what weight to give a survey, the court may consider a variety of factors, including survey design, nature of the questions asked, and the experience and reputation of the surveyor…Qualified respondents viewed the displays side-by-side…They then answered four questions. Two focused on the likelihood of confusion between the products when they were displayed side-by-side. One focused on the likelihood of confusion if the products were sold in the same store, but were not placed side-by-side, while the last focused on the likelihood of confusion if the products were not sold in the same store…Having

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reviewed the survey, the court concludes that the methodology employed by [Plaintiff’s expert] raises serious questions regarding the reliability of her results…There is no evidence in the record, however, that [Plaintiff’s] and [Defendant’s] products are sold side-by-side other than in a single K-Mart display…As a consequence, [Plaintiff’s] survey did not replicated marketplace conditions…

Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541, #10, *14-*18, *20-*21 (E.D.N.Y. 2005)

Plaintiff submits a report by its expert…wherein he discusses a survey he conducted “to determine whether there is a likelihood of public confusion between the trademarks and trade names ‘Vista’ and ‘Vistar.’”…

… …While errors in survey methodology usually go to weight of the evidence, a survey should be excluded under Federal Rule of Evidence 403 when its probative value is substantially outweighed by the risk of prejudice or confusion…

…there are several defects in the survey which significantly reduce its probative value. As an initial matter, the brochure shown to the participants did not replicate “actual market conditions.”…The brochure correctly showed Plaintiff’s logo only twice…Inside the brochure, however, were 45 mentions of the name [not in the manner it is used in the marketplace]…After removing the brochure and asking general questions, the participants were provided with a list of ten names…Defendant’s mark was not shown as it is used in commerce… Thus, by focusing on the words…the survey failed to replicate actual marketing conditions and improperly skewed results in favor of responses indicating confusion… This flaw is further exacerbated by the survey’s failure to use a control product, i.e., “‘a non-infringing product which is similar to the products at issue.’”… …the survey utilized an improper universe… Here, the Complaint alleges that Defendant’s logo causes “confusion among and mislead[s] the users of plaintiff’s food distribution services into believing that defendant’s products were, in fact, the plaintiff’s or were in some way connected therewith.”…Thus, Plaintiff is claiming the “traditional” type of confusion. The right universe, therefore, is the junior user’s (Defendant’s) potential customers. The [Expert’s] Report…indicates that the universe was defined as 75 persons “who fall within target market characteristics of [Plaintiff]”…Thus, the survey’s reliance on Plaintiff’s market as opposed to that of Defendant’s further weakens its results. Even had the universe been properly defined, 75 [respondents in one location] is too small a sample to be representative of the universe of

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potential consumers of Defendant’s products, which are distributed nationwide…

Borinquen Biscuit Corp. v. M.V. Trading Corp., 2005 U.S. Dist. LEXIS 41452, *10-*11 (D. P.R. 2005)

…while plaintiff…presented no evidence of actual confusion, neither was the Court convinced by the results of [Defendant’s] customer survey offered to prove that there is no confusion…In the main, the Court finds the [Defendant’s] survey flawed because it is essentially challenging customers to try and spot the differences between the two boxes-it was not designed to identify whether a potential customer was in fact confused…

Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642, *20-*21, *22 & n.15, *23-*24 (E.D. Va. 2005)

The Court found that defendant’s cross examination…revealed a number of weaknesses in GEICO’s survey evidence. First, the control did not successfully demonstrate the source of the test group's confusion. As the survey expert admitted, an effective control should have removed from the page viewed by the test group the allegedly infringing elements for which GEICO wanted to measure confusion…This would have allowed the evaluator to subtract any degree of confusion expressed by the control group from that expressed by the test group, with the resulting difference representing the confusion attributable to the eliminated elements--similar to the manner in which medical researchers subtract out the “placebo effect” of a drug or procedure under examination. However, the survey’s control…did not function as an accurate measure of the confusion caused by non-infringing elements…the control retained the use of “GEICO” as a keyword, which itself was alleged to be a source of confusion. Further, instead of removing only the references to GEICO in the Sponsored Links, which would have measured whether the use of the trademarked keyword to place relevant Sponsored Links or the appearance of the mark in the ads was responsible for respondents’ confusion, the survey removed all references to car insurance and replaced them with clearly unrelated NIKE ads. Thus, the control did not reveal which aspects of the insurance-related Sponsored Links caused respondents’ confusion--the use of GEICO’s mark in the ads or the ads’ mere reference to insurance. [n15 No respondent in the control group expressed confusion when asked whether clicking on one of the NIKE Sponsored Links would direct him to GEICO’s Web site…]…

Second, the survey design introduced “demand effects” and “order effects” that could have tainted respondents’ answers that appeared to indicate confusion. A demand effect results when the interviewer’s questions or other elements of the survey design influence participants’ responses by suggesting what the “correct” answers might be or by implying associations that might not otherwise occur to participants…order effect results when a participant’s answer to one question affects his answers to subsequent questions. For obvious reasons,

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both effects can significantly bias the survey results. In this instance…the interviewers repeatedly questioned respondents about their behavior and assumptions with regard to GEICO and obtaining GEICO quotes. Responses to subsequent questions, such as whether the participant thought the Sponsored Links were affiliated with any company, easily could have been influenced by the earlier questions about GEICO, making the participant more likely to assume that “GEICO” was the right answer or what the interviewer wanted to hear…the order effect, also undercut the assessment of confusion…Of the five Sponsored Links listed, only the last one did not refer to GEICO in its heading or text. By the time respondents considered this ad, they had already seen the four others that did contain the GEICO mark, calling into question whether they would have expressed similar confusion if faced only with insurance-related ads that appeared next to the organic results for “GEICO” but did not mention the mark itself.

Third, discrepancies between the Web page selected to be shown to the survey participants and the actual pages users are likely to see when searching on “GEICO” further weakened the reliability of the results…the page chosen included more Sponsored Links than the average Google results page. In addition…the overall appearance of the outdated screen shot shown to survey participants differed markedly from the Google results page that a user would encounter in running a real search…

Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 2005 U.S. App. LEXIS 15127, *18-*19 (8th Cir. 2005)

[Plaintiff’s] survey also fails to create a genuine issue of material fact regarding the likelihood of confusion. In the survey, participants who had played the [Defendant’s] games were shown a picture of the [Plaintiff’s] ice cream truck and told, “Please take a look at this. Feel free to comment on anything that strikes you about it, positively or negatively.” Seventeen percent of the participants mentioned that it reminded them of or looked like images from the [Defendant’s] games. As a follow-up question they were asked, “Specifically, does this or does this not remind you in any way of an ice cream truck or character that you have seen before or are aware of?” Thirty-four percent of those surveyed indicated that it reminded them of something from the [Defendant’s] games. But these responses are not probative of confusion. A leading trademark treatise states, “‘Confusion’ means more than that the junior user’s mark merely ‘calls to mind’ the senior user’s mark…While the junior user’s mark may call to mind the senior user’s famous mark, this alone is not sufficient for a likelihood of confusion.”…The survey fails to address the relevant inquiry, which is whether consumers are confused as to the existence of any sponsorship of or affiliation or association [between Plaintiff and Defendant].

MetLife, Inc. v. Metropolitan Nat’l Bank, 388 F. Supp. 2d 223, 232-233 (S.D.N.Y. 2005)

…[Plaintiff] conducted a survey of 350 consumers in an effort to determine whether they were likely to confuse the parties’ marks…A test group

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was shown the blue “MetBank” logo as photographed at the 99 Park Avenue location and a control group was shown a similar blue logo with the name “MetroBank.” The images were identical in size, quality, and manner of depiction…The results of the survey were that 38% of the test group believed that MetBank was owned, operated, associated with, or sponsored by [Plaintiff]. In contrast, only 4% of the control group believed that “MetroBank” was owned, operated, associated with or sponsored by [Plaintiff]….

… In opposition, [Defendant] submits the declaration of…an expert in

consumer surveys, who has reviewed the [Plaintiff’s] survey…Notably, [Defendant] did not offer evidence of any consumer study of its own.

Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 387-388 (2d Cir. 2005)

…[Plaintiff’s] evidence of actual confusion was extremely weak while [Defendants’] evidence, though not flawless, tended to prove that actual confusion was minimal at worst and nonexistent at best. [Plaintiff’s] evidence of actual confusion consisted entirely of testimony by several interested witnesses recounting a handful of anecdotes, including a number of hearsay statements by unidentified and unidentifiable declarants. [Defendants], on the other hand, submitted consumer surveys tending to rebut charges of actual consumer confusion. [Plaintiff] points out, and the district court noted, various flaws with these surveys. But as [Defendants] correctly point out, [Plaintiff’s] failure to present its own consumer survey weighs against a finding of consumer confusion…

Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625, 629-631 (9th Cir. 2005)

After Survivor aired, [Plaintiff] encountered a few people who wondered whether his business was sponsored by Survivor. One retailer and one customer mistook Survivor sunscreen for [Plaintiff’s] product, and one trade show attendee thought that [Plaintiff’s] business was endorsed by Survivor’s producers. …a survey commissioned by Survivor revealed that fewer than two percent of four hundred and two sunscreen purchasers were confused by the two marks…

… We have recognized two distinct claims in the trademark infringement context: forward confusion and reverse confusion…Forward confusion occurs when consumers believe that goods bearing the junior mark came from, or were sponsored by, the senior mark holder…reverse confusion occurs when consumers dealing with the senior mark holder believe that they are doing business with the junior one… We need not determine whether [Plaintiff] raised a material issue of fact on the forward confusion claim. [Plaintiff] may not proceed on this theory because he failed to reference it in his complaint…

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Pilot Corp. of America v. Fisher-Price, Inc. and Mattel, Inc., 344 F. Supp. 2d 349, 358 (D. Conn. 2004)

I agree with [Defendant] that there are at least three significant problems with the [Plaintiff’s expert’s] survey. First, consumers were never shown any products. Instead, the survey was designed to determine whether the two logos were, in the abstract, confusingly similar. That two logos may be confusing when viewed in isolation, does not show that their use on two separate products is also confusing. Second, the survey did not use the entire trademarked logo for the Magna Doodle. [Plaintiff’s expert] left out two potentially distinguishing markers - the words “The Original” and the Magna Doodle slogan - even though those items have consistently been present on the actual Magna Doodle products. Third, the survey’s “internal control” seems inadequate. It does not account for the possibility that respondents could have relied on non-protected similarities such as similar colors…

CareFirst of Maryland, Inc. v. First Care, P.C., 350 F. Supp. 2d 714, 725 (E.D. Va. 2004)

…This Court [finds] that two people out of 130 indicating actual confusion is de minimus…this number is far below ten percent of the survey respondents, a threshold that the United States Court of Appeals for the Fourth Circuit established in order for survey evidence to indicate likely actual confusion…

Frank M. Sullivan III v. CBS Corp., 2004 U.S. App. LEXIS 20062, *16-*17 (7th Cir. 2004)

…[Plaintiff] had ample opportunity to conduct his own survey, but he chose not to… [Plaintiff] was not required to conduct his own survey, but he presented no other evidence of actual confusion or likelihood of confusion…with one exception. That exception is a presentation showing the results of searches conducted on two automated search engines. The search engines retrieved web sites related to both the [Plaintiff] and the [Defendant]. This does not mean, however, that the search engine was “confused” as to the source of the sites…But those results just take us back to the same point about confusion: would a consumer, looking at the different web-sites, think that [Defendant] and the [Plaintiff] were somehow from the same source?…

In re Borysiewicz, 2004 T.T.A.B. LEXIS 622, *2 (T.T.A.B. 2004) This disposition is not citable as a precedent of the T.T.A.B.

In addition, we note that in [the] reply brief, applicant refers for the first time to the “results of a survey conducted as to whether consumers are likely to be confused as to the marks CIELO and HEAVEN.”…inasmuch as the evidentiary

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record in an application should be complete prior to the filing of an appeal, such evidence is untimely…Moreover, the purported results are of no probative value in any event given the absence of any information as to the methodology utilized in conducting the consumer survey…

Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 487-488 (5th Cir. 2004)

…In assessing the validity of a survey, we look to two factors: first, the manner of conducting the survey, including especially the adequacy of the universe; and second, the way in which participants are questioned… …In an infringement action, “the appropriate universe should include a fair sampling of those purchasers most likely to partake of the alleged infringer’s good or services.”…The universe in [Plaintiff’s] survey consisted entirely of persons who purchased Kirby vacuum cleaners through [Plaintiff]. This group is uniquely familiar with [Plaintiff’s] marketing and distribution techniques. Thus, the survey says nothing about the ad’s effect on the class of potential consumers of new Kirby vacuum cleaners, a class that includes a large proportion of persons who have not yet purchased a Kirby… In any event, flaws in the questions asked prevent the survey from proving confusion even among potential consumers…first, the surveyors asked whether [Defendant] “is in any way affiliated with, connected with, sponsored by, associated with or authorized by” Kirby. The use of the phrase “in any way” prodded survey participants to search for any connection, no matter how attenuated, between the two companies. Second, the survey question suggested a connection between [Defendant] and Kirby instead of permitting participants to make their own associations. A survey question that begs its answer by suggesting a link between plaintiff and defendant cannot be a true indicator of the likelihood of consumer confusion…

McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733, *59-*60 (D. Puerto Rico 2004)

…The respondents in [Defendant’s] survey were…asked, “Based on what you just saw, do you or don't you know who or what brand or company makes or puts out the sugar substitute that I showed you?”…

…the tortured wording of this question likely contributed to its extremely low response rate. The question uses the word “or” four times in a single sentence…Following the…“admonishment” to respond only if the [sic] they knew the correct answer, and not to guess, participants in [Defendant’s] survey overwhelmingly indicated that they did not know “who or what brand or company makes or puts out” the product they had just seen. …[Defendant’s] expert…testified that, in formulating this question, he was guided by the survey conducted and approved by the Court in Union Carbide Corp. v. Ever-Ready Inc.…The actual question asked in Ever-Ready was much simpler…“Who do you think puts out the lamp shown here?”…The differences

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between [Defendant’s expert’s] question and the question in Ever-Ready are material, and likely affected the responses.

Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 15297, *15-*16, *45, *47 (D. Or. 2004)

…Plaintiff did not conduct a consumer survey to assess whether a likelihood of confusion would occur between easyedge SM and edgeWIRELESS® or plaintiff's rate plan marks. Instead, plaintiff obtained the services of…a brand marketing consultant with over twenty years experience in advertising…

… …Specifically, [Plaintiff’s expert] was asked to address three questions:

1. Does plaintiff have a viable brand in the marketplace? 2. If easyedge SM was introduced into plaintiff's markets, would

there be a likelihood of confusion? 3. If so, what would be the likely effect on plaintiff?

… …Plaintiff's expert report does not alter the court's conclusion that no

confusion is likely to occur… …[Plaintiff’s expert] did not base his opinion on survey evidence, marketing research, or other empirical data...Instead, [Plaintiff’s expert] testified that his conclusion was “an educated estimate based on my experience.”…

… …I do not find that the lack of survey evidence warrants a presumption that the results would have been unfavorable to plaintiff…

WE Media, Inc. v. Cablevision Systems Corp., 2004 U.S. App. LEXIS 7379, *7 (2d Cir. 2004)

…“[Plaintiff’s] strongest evidence purporting to show actual confusion would be [Plaintiff’s expert’s] Report concluding that one-third of his respondents believed [Defendant] and [Plaintiff] to be affiliated.”…However, the district court found that flaws in methodology meant that the Report carried little probative weight…We agree…The district court also declined to infer the possibility of confusion from the United States Patent and Trademark Office's refusal to register [Defendant’s] mark. Therefore, the district court concluded that this element did not support [Plaintiff].

Empresa Cubana del Tabaco d.b.a. Cubatabaco v. Culbro Corp., 2004 U.S. Dist. LEXIS 4935. *128-*129 (S.D.N.Y. 2004)

The 2000 survey conducted by [Plaintiff’s] expert also demonstrated a significant degree of confusion among consumers…approximately 15% of all premium cigar consumers were confused…

…

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Figures comparable to those in the 2000 survey have been found probative of a likelihood of confusion…

New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 312 F. Supp. 2d 195, 224 (D. Conn. 2004)

…participation in the administration of the survey by those with knowledge of the litigation and the use of leading questions raise the risk of insincerity in responses and cast doubt on the trustworthiness of the survey…The questions challenged as leading clearly are both in form and in context (i.e. considering the preceding questions). Furthermore, [Plaintiff’s expert] and his son should not have administered the survey.

Longevity Network, Ltd. v. Joel D. Wallach, 2004 T.T.A.B. LEXIS 171, *24-*25 (T.T.A.B. 2004). This disposition is not citable as a disposition of the T.T.A.B.

…Respondent objects to this testimony on numerous grounds including that [Petitioner’s expert] is unqualified to render an expert opinion, the methodology of the survey is flawed, and the results are unreliable. We agree with respondent to the extent that we can give the survey little, if any, weight. [Petitioner’s expert] “works almost exclusively as a distributor for [Petitioner].”…He has “a two-year degree from what was called [H]eald Business College” and he has taken a course in Probability in Statistics…The witness indicated that he had no training or background in developing consumer surveys in likelihood of confusion cases… The “survey” petitioner has submitted was really an Internet poll… Participants were instructed that: “If you don't know an answer to a question you are better off just taking your best guess and quickly moving on.”…Anyone who visited the witness’s website could take the test and there was no attempt made to exclude participants who were not potential purchasers of nutritional supplements… …Because of the lack of screening of participants and the vagueness of the question, among other things, this survey offers little support for petitioner.

1-800 Contacts, Inc. v. WhenU.com and Vision Direct, Inc., 309 F. Supp. 2d 467, 499-500 (S.D.N.Y. 2003)

Plaintiff’s survey statistics rely on numerous leading questions that suggested their own answers,…and that are therefore entitled to little weight in assessing consumer confusion... Even if [the survey] questions are disregarded, the survey is burdened by other flaws. To have substantial probative value, Plaintiff’s survey must examine the impression of a junior mark on a potential consumer… Plaintiff’s expert… testified…that in the survey he did not show respondents an example of a SaveNow pop-up advertisement [and] also did not ask whether survey respondents had ever seen a SaveNow pop-up ad,…did not attempt to distinguish

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between SaveNow pop-up ads and other pop-up ads,…and did not determine whether differences between SaveNow ads and other pop-up ads might have affected users’ perceptions of the advertisements provided by SaveNow… … Accordingly, [Plaintiff’s] survey, as designed and carried out, is not dispositive of whether pop-up advertisements generated by the SaveNow software has caused actual confusion among SaveNow users, and is not evidence of actual confusion.

Medical Economics Co., Inc. v. Prescribing Reference, Inc., 294 F. Supp. 2d 456, 461 (S.D.N.Y. 2003)

…[Defendant’s expert] admits that while his survey shows some “confusion,” it does not show what caused that confusion because he did not test causation…In addition, the [Defendant’s] survey failed to use any controls…Although the results of [Defendant’s] survey shows some confusion or some likelihood of confusion, it does not show that this confusion exists because the respondents are confused by the titles of the publications at issue…

Wells Fargo & Co. v. WhenU.Com, Inc. 293 F. Supp. 2d 734, 765-768 (E.D. Mich. 2003)

…It is clear from a review of…the most critical factors that [Plaintiffs’ expert’s] surveys do not provide reliable evidence of likelihood of confusion…

… “To have substantial probative value, a survey…must…be designed to examine the impression presented to the consumer by the accused product…”

… …at a minimum, survey respondents should have been shown the item that is said to be infringing or confusing…

… Identification of the proper universe is recognized as a critical element in the development of a survey… In this case, the relevant universe consists of people who are likely to bank or look for a mortgage online… Because [Plaintiffs’ expert] failed to survey the appropriate universe of people, the results of his 1-800 [contacts] and Gator surveys cannot be extrapolated to this case regardless of whether those respondents were demographically representative of the general population of Internet users…Only a fraction of Internet users bank and obtain mortgages online; therefore, there is no way to know whether any of the Gator and 1-800 [contacts] respondents were users or potential users of plaintiffs’ websites...

… A survey is not reliable if it suggests to the respondents an answer that would not otherwise have occurred to them. More specifically, “it is improper to suggest a business relationship where the respondent may previously have had no thought of any such connection.”…

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…The Court cannot find [Plaintiffs’ expert’s] conclusions on this subject reliable, because the survey questionnaire repeatedly suggested to respondents a link between pop-up ads and websites… [Plaintiffs’ expert’s] surveys suffered from numerous other flaws, including the use of an Internet Panel…and the failure to use control questions to generate an error rate…Of even greater significance, [Plaintiffs’ expert] failed to employ an experimental design that established causation…

… …Plaintiffs have…not established any likelihood of confusion in

defendant’s “use” of their marks… Anheuser Busch, Inc. v. Caught-on-Bleu, Inc., 2003 U.S. Dist. LEXIS 18010, 121-123 (D. N.H. 2003)

[Plaintiff] has submitted a survey which found “a substantial likelihood of source confusion” between [Plaintiff] and [Defendant] based on the use of the Billy Budd mark. The survey…revealed that a total of twenty-four percent of consumers who were shown a tap handle identical to that distributed with the kegs of [Defendant’s] product believed that [Plaintiff] put out the product or was affiliated or connected with, or had given permission to, whomever did…Each [respondent] was shown either a tap handle identical in all respects to that which had been distributed with the kegs of [Defendant’s] product, or one identical in all respects except the insertion of the word “Boy” for “Budd.”…

… [Defendant] attempts to challenge [Plaintiff’s expert’s] conclusion with

the testimony of its own expert…The fact that [Defendant] has procured an expert affidavit which purports to contradict that of [Plaintiff’s] expert, however, does not necessarily render summary judgment inappropriate…

… [Defendant’s expert] also calls [Plaintiff’s] survey “problematic” because the interviews occurred in the “artificial environment” of a shopping mall, rather than in a bar, restaurant, or store. [Defendant’s expert] opines that in such a “realistic purchase environment, the chances that a beer purchaser would be confused between Billy Budd and Budweiser are quite remote.” As an initial matter, this testimony is insufficient to defeat summary judgment because it lacks any foundation, i.e., [Defendant’s expert] does not present the conflicting results of a consumer study which was actually conducted in a bar, restaurant, or other beer retail outlet or provide any other basis for his opinion. Furthermore, [Defendant’s expert’s] testimony runs afoul of settled law that mall-intercept surveys of the kind conducted by [Plaintiff’s expert] are acceptable proof of actual confusion…

Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 375 (S.D.N.Y. 2003)

The [Plaintiff’s] Survey also tested for consumer confusion in the marketplace regarding the parties’ packaging trade dress…[Plaintiff’s expert’s]

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description of the survey results goes on to conclude that, “in total,…10% of the respondents said that the similarity of [the parties’] packages was the basis for their belief that the Famous Squish candy was ‘put out’ or made by the same company as Original Swedish Fish candy or that it had obtained an approval or permission from Original Swedish Fish.”… …this…conclusion of a 10% consumer confusion over packaging overstates the point since the underlying data show only a 9.5% confusion level which was rounded upward by [Plaintiff’s] expert to 10%…Even assuming that the [Plaintiff’s] Survey was conducted within the bounds of acceptable testing methodology…the survey’s report that only 9.5% of respondents expressed confusion over the parties’ packaging trade dress is too low to sustain [Plaintiff’s] contention of actual confusion…

Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408, *9-*10 (T.T.A.B. 2003). This disposition is not citable as a disposition of the T.T.A.B.

…applicant argues that the survey was unfair because the shirts on which the marks were shown to the survey respondents were identical to shirts on which opposer’s mark is actually used…This argument conveniently overlooks the fact that as identified in the application, applicant’s goods encompass the goods on which opposer has used its mark…Because applicant shows its mark in typed format in the application, applicant would be free to adopt any style of lettering it chooses, so the fact that the shirts used in the survey present the marks in block letters does not invalidate the results of the survey. Similarly, in view of the absence in the application of restrictions or limitations as to the types of shirts, for example, the channels of trade through which they will move, and the purchasers applicant plans to target with its advertising for its goods, opposer was under no obligation to use only high-end items of apparel or to choose only well off, sophisticated consumers for its survey.

Gateway, Inc. v. Companion Products, Inc., 2003 U.S. Dist. LEXIS 21461, *41 & n.4, *42, *43 & n.7, *47-*48 (D. S.D. 2003)

[In Plaintiff’s survey] the participants were randomly divided into two groups. The test cell was exposed to a photograph of Cody Cow wrapped around a computer monitor; the control cell saw a photo of the tiger stretch pet wrapped around a monitor. The surveys were otherwise conducted identically… The exposure to the photograph mimicked the overall commercial impression consumers would receive in the marketplace. It also resembled how consumers would view Cody Cow in advertising materials…

… n4 While allowing the survey participants to look at the photograph, the

person conducting the survey stated: Here is a picture of a product that is used to decorate or personalize a computer monitor. As you can see from the picture, it stretches to fit around the screen. Please take a look at this as you would if you saw it on

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somebody's computer or if you were shopping for personal computer accessories either on the internet or in a computer store. Take as much time as you normally would when looking at something like this or when shopping for such products. Let me know when you are finished.

… Participants were first asked, “Based on what you just saw, do you or do

you not have a belief as to who or what company or companies makes or puts out the product in the picture that I just showed you?” Those who had a belief were asked “Who or what companies do you believe makes the product in the picture that I showed you?” They were also asked whether they knew of other products made by whomever made the product in the picture, what those products were, and whether they believed that whoever made the pictured product is or is not related to, sponsored by, or associated with any other source or company. After each question, they were asked to explain why they came to that conclusion…

… …[Plaintiff’s expert] subtracted the percentage of people who identified

[Plaintiff] in the control group from the percentage of people who named [Plaintiff] in the test group. This resulted in the adjusted likelihood of confusion…

… Displaying Cody Cow in the post-sale context, moreover, does not invalidate the survey since the Lanham Act protects post-sale as well as point-of-sale confusion…

Brockmeyer v. The Hearst Corp., 248 F. Supp. 2d 281, 298 (S.D.N.Y. 2003)

…there is no evidence of any consumer confusion. The Defendants commissioned a survey, which was performed in accordance with accepted market testing techniques. This survey revealed that fewer than 3% of respondents saw any connection between the Plaintiff’s magazine and [the magazine] produced by the Defendants. This rate of confusion is not sufficient to demonstrate a likelihood of confusion. See Cumberland Packing Corp. v. Monsanto Co., 140 F. Supp. 2d 241, 254 (E.D.N.Y. 2001) (finding survey’s confusion rate of 7.84% insufficient to raise material fact as to likelihood of consumer confusion); cf. RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1061 (2d Cir. 1979) (finding a consumer survey showing a fifteen to twenty percent rate of product confusion to be probative of a showing of confusion)…

Masterfoods, USA v. Arcor USA, Inc. and Arcor S.A.I.C., 230 F. Supp. 2d 302, 311 (W.D.N.Y. 2002)

[Plaintiff’s] survey results…concluded that [Defendant’s] ROCKLETS are mistaken by consumers as being a Mars product, or being a product authorized by Mars, because of the packaging. The survey used, in one “cell,” a package of ROCKLETS plain chocolate candy…respondents…were shown the ROCKLETS package and asked, “who, or what company, do you believe puts out these

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candies?”…37.80%, answered that the ROCKLETS candies in the brown package were put out by Mars or M&M’s®, despite the appearance of “ROCKLETS” and “Arcor” on the packages…When asked the follow-up question, “what other brand name or names, if any, do you believe are used by the company that puts out these candies,”…21.53%, answered either Mars or M&M’s®…

The survey also used two control cells, one which used a white paper package with the words Arcor and ROCKLETS on it…The package had a small clear window through which one could see colored lentils…The other control cell used a similar white package, but the candies seen through the small clear window in the package were all white lentils…

…[Plaintiff’s survey] shows that at least 29.22% of respondents were confused as to the origin of ROCKLETS candies based on the package alone…That is a significant number, especially when considering that the names ROCKLETS and Arcor appear on the ROCKLETS packages. Contrary to [Defendant’s] counsel’s suggestions, the Court finds that this survey, with the package in isolation, strongly shows that Arcor was successful in imitating the M&M’s® trade dress, albeit with a different name on the front…

adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 25141, *11 (D. Or. 2002)

…through the evidence of the double-blind survey, [Plaintiff] has demonstrated a triable issue of fact on the issue of post-sale confusion, which occurs when consumers other than the purchaser see the item after it has been purchased…

Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp. 2d 399, 408 (S.D.N.Y. 2002)

…A central problem with the survey, however, is that it compared the [Plaintiff’s] can and label to [Defendants’] can and label rather than comparing the [Defendants’] trademark to Defendants’ label. Thus, the results of the survey are geared to a trade dress infringement claim (which encompasses the entire packaging of the goods) rather than to a trademark infringement claim (which focuses on the actual mark). Given this problem, the survey does not provide evidence of actual confusion between the [Plaintiff’s] trademark and the Defendants’ products.

Louis Kemp v. Bumble Bee Seafoods, Inc., 2002 U.S. Dist. LEXIS 19316, *22-*23 (D. Minn. 2002)

…There are several indicia of reliability a court can consider in assessing the validity of a consumer survey. These factors include whether: “the population was properly chosen and defined; the sample chosen was representative of that population; the data gathered were accurately reported; the data were analyzed in accordance with accepted statistical principles; the questions asked were clear and not leading; the survey was conducted by qualified persons following proper

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interview procedures; and the process was conducted to ensure objectivity.” (Sports Authority, Inc. v. Abercrombie & Fitch, Inc., 965 F. Supp. 925, 933 (E.D. Mich. 1997) (quoting the Manual for Complex Litigation, Third, § 21.493 (1995)).

U S West, Inc. v. Hatten Communications Holding Co., Inc., 2002 T.T.A.B. LEXIS 620, *15-*20 (T.T.A.B. 2002) This disposition is not citable as a precedent of the T.T.A.B..

…we have not relied upon opposer’s survey, which has certain deficiencies. Purportedly, “the survey resulted in a likelihood of confusion finding of 22.9%.”…

Opposer’s survey was a shopping mall intercept survey conducted in four cities all within opposer’s fourteen state region…A total of 420 respondents, age 18 or older, participated in the survey….the respondents were shown two cards at separate times. One card had U S WEST typed at the top, and the other card had US EAST typed at the top…Consumers were shown the U S WEST card, and then it was removed from their view. Consumers were shown the US EAST card, and it too was removed from their view…

When the first card was taken away, the respondents were then asked…“What company do you think provides the services mentioned in that card? If you do not know, please feel free to say so.” This question was repeated after the respondent was shown the second card. Again…only after the second card had been removed from the view of the respondent. Depending upon their responses to these two questions, certain respondents were then asked the following question: (1) Do you think the services provided in the exhibits I just showed you are provided by the same company or by different companies? If you do not know, please feel free to say so. If a respondent said “different companies” or “don’t know” to question one above, he was asked…(2) Do you think the companies that provide the services in the exhibits I just showed you are associated with each other in any way or that they are not associated? If you do not know, please feel free to say so. If a respondent said “not associated” or “don’t know” to question two above, he was asked…(3) Do you think that either U S WEST received permission from US EAST to use the name U S WEST or that US EAST received permission from U S WEST to use the name US EAST or did not receive permission? If you do not know, please feel free to say so.

At the outset, we note that all four questions - the initial question which was repeated twice and the three follow-up questions - are in effect a test of the respondent’s memory in that the cards bearing the marks U S WEST and US EAST were removed from the respondent’s view prior to the questions being posed…

…the survey lacked a degree of “control”… The final three pertinent questions are not only memory based questions,

but…are somewhat convoluted… In short, we have accorded no weight to opposer’s survey. Not only are

the questions memory based and convoluted, but in addition, a respondent merely

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had to give a “wrong” answer to one of the four pertinent questions in order to be counted as part of the 22.9% of the respondents who were “confused.”

Giant Brands, Inc. v. Giant Eagle, Inc., 228 F. Supp. 2d 646, 655 (D. Md. 2002)

In Sara Lee Corporation v. Kayser-Roth Corporation, 81 F.3d 455 (4th Cir. 1996), the Fourth Circuit noted that a survey estimate finding 15% confusion of similarity in marks would demonstrate actual confusion to a significant degree…On the other hand, the court suggested that “survey evidence clearly favors the Defendant when it demonstrates a level of confusion much below ten percent.”…(citing Henri’s Food Products Co., Inc. v. Kraft, Inc., 717 F.2d 352, 358 (7th Cir. 1983)). In addition, while “actual confusion can be demonstrated by survey evidence,…survey evidence is not necessarily the best evidence of actual confusion and ‘surveys are not required to prove likelihood of confusion.’”…

Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634, *22-*25 (E.D.N.Y. 2002)

[Plaintiff] also offers the “professional study” it relied upon in its effort to show secondary meaning to support its claim of actual confusion…

[Plaintiff’s] survey reports that fifty-five percent of the twenty-five participants shown [Defendant’s] tray associated it with [Plaintiff]; thirty-three percent of those shown the [Plaintiff’s] tray were not sure whether the tray originated with [Plaintiff] or [Defendant]…However, once the participants were allowed to inspect the trays, there was little confusion. As [Plaintiff] acknowledges, “upon closer inspection, respondents could see the [Defendant’s] logo on the back of their tray and most were able to identify the manufacturer.”…

…even if the survey were accepted as accurate…it is not particularly persuasive as to actual confusion: The trays were shown separate from their packaging at a significant distance, and the conditions appear to have been chosen to make it difficult for the participants to discern [Defendant’s] logo before being asked to identify the tray brand…

Sally Beauty Co., Inc., Marianna Imports, Inc. v. Beautyco, Inc., 304 F.3d 964, 979-980 (10th Cir. 2002)

…[Plaintiff] points to the survey…which reports that 51 out of 180 participants, or twenty-six percent of participants after adjusting for error, believed that [Defendant’s product] was manufactured by [Plaintiff] based solely on the products’ packaging or appearances. The survey concludes that “[a] significant number of respondents provide ‘package/appearance’ related reasons as a basis for their mistaken belief that [Defendant’s product] is put out by the same company that puts out [Plaintiff’s products]. . . . Even after adjusting for ‘noise,’ confusion remains high[,] accounting for more than one out of four respondents.” [Plaintiff’s] survey is strong evidence of actual confusion…

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WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463, 474 (S.D.N.Y. 2002)

Due to flaws in its methodology, [Plaintiff’s] Report does not provide support for [Plaintiff’s] case…[Plaintiff’s expert] did not use pictures or advertisements that approximate what a potential customer would encounter in making her television-viewing choices. Thus, by presenting respondents with word lists, [Plaintiff] essentially measured respondents’ word associations devoid of context. Accordingly, the information within [Plaintiff’s] Report does not go to the issue at bar.

Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335, 365-366 (D. N.J. 2002)

[Defendant] produced evidence in the form of a survey of the relevant population…of ophthalmologists and optometrists…

… The…Survey tested for product source confusion. It asked a series of

questions based on a stimulus that was mailed to respondents in a sealed envelope…There were two cells in the survey: (1) a test cell of 200 prescribers that used a[n]… advertisement [for the alleged infringing mark] as the stimulus; and (2) a control cell, also of 200 prescribers, that used an identical …advertisement [featuring a mark not alleged to infringe] as the stimulus…The stimulus was designed to focus the respondent’s attention primarily on the name of the product…

The questions…selected for the survey (“What company do you believe puts out the product whose advertisement you just saw?;” “Please tell me whether or not you believe the company whose advertisement you just saw puts out any other medications for the eye;” and “Please tell me whether or not you believe that the company whose advertisement you just saw needs authorization, permission or approval from some other company in order to put out the product advertised.”)… are a standard type and format of questions used to gauge confusion in trademark cases…[Defendant’s] survey expert…used virtually identical questions in a trademark confusion survey he designed in a prior infringement case…

Five percent of the test cell respondents confused the source of [Plaintiff’s mark] and [Defendant’s mark] and 3.5% of control cell respondents confused the source of [Plaintiff’s mark] and [the control mark], yielding net confusion of 1.5%...

National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474, 482-484 (S.D.N.Y. 2002)

[Plaintiff] offered a survey conducted…in various shopping malls…and is a so-called “two-room” survey. Subjects were…only those who indicated that they drink “liquor, such as gin, rum, tequila, or vo[dk]a” on average at least once a month…In the first “room,” the interviewer showed the subject the TETON GLACIER label, without the bottle to which it is normally attached. Then, in the

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second room, the subject was shown seven or eight empty cooler bottles…and told, “Some, all, or none of these alcoholic beverages may come from the same maker or company as the product on the card I showed you [in the first room]. Which, if any, of these alcoholic beverages do you think come from the same maker or company as the product on the card I showed you [in the first room]?…

… We find two major flaws in [Plaintiff’s] survey that persuade us that it

does not reliably indicate the existence of actual confusion. First, we find that the “universe” was not properly defined. The proper universe in a forward confusion case is the universe of potential purchasers of the junior user’s product, here, the cooler drinkers who may purchase Glacier Bay…[Plaintiff] however, chose a universe of respondents who regularly consume “liquor, such as gin, rum, tequila, or vodka.” We are not convinced that this definition would generate a universe of potential Glacier Bay purchasers because the evidence adduced at trial demonstrated that the liquor and cooler markets are not coextensive…

The second major flaw…in [Plaintiff’s] Survey is that every respondent was exposed to the Teton Glacier product in the first room, thus acquainting them with a product that they would almost certainly have been unfamiliar with otherwise, due to Teton Glacier’s very limited distribution network and weak sales…

Apart from these two glaring flaws…there were other methodological errors...First, the respondents were shown the Teton Glacier label on a card, rather on a bottle…as they would encounter the label in the marketplace. Second, while the cooler bottles would obviously be full when sold in the marketplace, they were empty when shown to the subjects…In sum, the…Survey simply did not sufficiently replicate marketplace conditions to make it a reliable indicator of actual confusion in the marketplace.

… [Defendants] commissioned their own survey…subjects chosen were

persons 21 years of age or older and who had purchased or consumed a cooler product within the previous ninety days, or who were likely to purchase such a product within the next ninety days. The [Defendant’s] Survey was not a “two-room” survey, but rather a “single exposure” design, similar to the well known Ever-Ready survey.See Union Carbide Corp. v. Ever-Ready Inc., 531 F.2d 366, 385 n.11 (7th Cir. 1976). In the [Defendant’s] Survey, the subjects were shown either a bottle and four-pack of Glacier Bay, or a bottle and four-pack of a fictitious “Arctic Bay” product as a control. The Arctic Bay product was created by modifying the Glacier Bay product by changing the word “Glacier” to “Arctic,” the abbreviation “GB” to “AB,” and by removing the mountains from the Glacier Bay label. The subjects were shown either the Arctic Bay or Glacier Bay products and permitted to examine them for as long as they wished. The products were then taken away and the subjects were asked a series of questions, to wit: “What company or companies do you think makes or puts out this product?”, “Whether you know the name of the company that makes this product, are you aware of any other products or brands put out by this company?”, if yes, then, “What other products or brands do you think are put out by the company

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that makes this product?”, and “If you have an opinion, do you think that the company that makes this product did or did not get approval or permission from any other company or companies in order to put out this product?”…

… [Defendant’s] Survey…is much more reliable because it more accurately

approximates actual market conditions. For example, subjects were not made artificially aware of Teton Glacier or the TETON GLACIER trademark. Most importantly, however, [Defendant’s] Survey selected an appropriate universe of respondents, namely, cooler consumers. In short, we find the [Defendant’s] Survey to be more reliable than the [Plaintiff’s] Survey…

The Pep Boys Manny, Moe & Jack of California v. The Goodyear Tire & Rubber Co., 2002 U.S. Dist. LEXIS 5925, *30-*33 (E.D. Pa. 2002)

…A primary infirmity identified by [Defendant’s expert] was [Plaintiff’s expert’s] failure to ask respondents why they answered as they did…I find that because the respondents were not asked the reason for their answers, there is no indication how much influence was exercised by the choice of stimuli over the respondents’ perception and thus the survey data are infirmed.

…because of the infirmities in the survey… I reject the purported survey…as showing there is any likelihood of confusion between the two marks.

Coty US Inc. and Coty Cosmetics Inc. v. Frontier Cooperative Herbs, 2002 T.T.A.B. LEXIS 144, *22 (T.T.A.B. 2002)

…opposers’ survey tends to bolster the conclusion we reach, we have not given much weight to it…survey involved…too much of a memory test...

E.I. duPont de Nemours and Co. v. duPont Publishing, Inc., 2001 T.T.A.B. LEXIS 740, *33 (T.T.A.B. 2001) This disposition is not citable as precedent of the T.T.A.B.

Surveys are statistical evidence that can be an aid to the Board. It must be kept in mind, however, that survey evidence is only one factor to be considered in the overall determination of likelihood of confusion…In this case, both parties, with significant merit, have perceived flaws in the other’s survey. Our skepticism about the reliability of the parties’ surveys in this case is fueled by the virtually opposite results reached by each party, namely a confusion rate of forty percent (opposer’s) versus three percent (applicant’s). In view of the flaws noted above and the wide disparity in these surveys which purport to determine essentially the same thing, we find that neither survey is particularly reliable. All in all, neither survey is of any particular assistance to the Board in resolving the issue of likelihood of confusion.

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Tiffany & Broadway, Inc. v. Commissioner of Patents and Trademarks, 167 F. Supp. 2d 949, 954-955 (S.D. Tex. 2001)

The parties developed jointly a consumer survey to gather data about actual confusion. They selected [a single expert to design a survey and certify on behalf of both parties] as their expert…

…The parties approved the questions… The results indicate a likelihood of confusion between Tiffany &

Broadway’s shoes and Tiffany & Company merchandise. Approximately 15 percent of those surveyed said the shoe was put out by, affiliated with, or approved by Tiffany and that Tiffany also sells jewelry, purses, handbags, or perfume.…(finding strong evidence of likelihood of confusion in survey showing a 15 percent association rate between Texon sign and EXXON)…

The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp. 2d 785, 786, 787 & n.2, 789- 792 (D. Md. 2001)

The Court has before it…Motion to Exclude the Expert Report and Testimony of…and the materials submitted by the parties relating thereto...

… …[Plaintiff] commissioned…a market research expert, to design and

conduct a survey to determine whether or not there is a likelihood of confusion between Network’s “Learning Network” [website] and Discovery Communications, Inc.’s…“The Learning Channel” or “TLC.”

... Each respondent was then shown one of two portfolios containing color

pictures of what was said to be a website page. Two hundred thirty-two respondents were shown the “Test” Portfolio containing pages from Network’s “Learning Network” site. Two hundred twenty eight respondents were shown the “Control” Portfolio [n.2 The “control” portfolio was used to determine whether the use of the word “learning” contributed to any confusion.], which was identical to the “Test” Portfolio, but within which the name “Learning Network” had been replaced with “Learning.com.”

… When respondents indicated that they had finished looking at the portfolio,

it was removed. Respondents were asked [a] series of questions… …

The question here presented is whether the asserted defects in the [Defendant’s] survey are so great as to warrant exclusion rather than gust (sic) for the mill of cross-examination, rebuttal evidence, and jury evaluation.

… [Plaintiff] raises the question of whether the survey format is defective

because the stimulus is presented through a medium different from that used by the consumer in the marketplace. Specifically, [Plaintiff] contends than a printed picture of a webpage has a different effect from the webpage as it appears on a computer monitor screen.

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… The Court concludes…it should not hold that the display of the stimulus

on a paper page rather than on a computer monitor, is a determinative, or even significant, factor...

… The Court finds that the survey is defectively designed in that it does not

engender reasonable confidence that all, a majority, or even a substantial number, of the subjects…were answering the questions posed with the understanding that the stimulus was the website of, or presented by, “Learning Network.” If subjects did not have this understanding, their responses to the “substantive” questions would be meaningless. …once the subject reached the portfolio pages purportedly depicting the website, he was denied significant location information that would be available to a real world consumer. Subjects were provided with a picture of the website which omitted the “title bar” at the very top of each website page. The “title bar” for the Learning Network home page includes the statement “Welcome to the Learning Network – your educational resource.”… Moreover, the portfolio website pictures omitted…the location tool bar which would tell the consumer that he was connected to http://www.learningnetwork.com.

… The Court finds that the survey was severely defective by virtue of its

failure to ask any question that would test the critical question of what website it is that the subject thought they had seen.

… The Court concludes that the subjects have not been shown to have known

that they had seen the Learning Network website as distinct from real world consumers who would have had this knowledge. Accordingly, the survey evidence does not establish that the subjects were answering questions with critical knowledge equivalent to that possessed by the relevant universe of consumers…

… …Motion to Exclude…GRANTED.

Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 678 (E.D. Va. 2001)

The report and testimony of…plaintiff’s expert…reinforces this conclusion…designed and conducted a survey to determine whether and to what extent individuals would likely believe that the Domain Name “harrodssouthamerica.com” is used or approved by [Plaintiff]…Between approximately twenty-three and thirty-one percent of those surveyed believed that “harrodssouthamerica.com” was used, approved, or permitted by [Plaintiff]… [S]urvey therefore confirms that the defendant Domain Names are confusingly similar because there is a significant likelihood of confusion between plaintiff’s HARRODS mark and defendant harrodssouthamerica.com…

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Sara Lee Corp. v. Goldstone Hosiery Co., 2001 T.T.A.B. LEXIS 204, *23-*27 (T.T.A.B. 2001) (This disposition is not citable as precedent of the T.T.A.B.)

Petitioner introduced the results of two shopping mall intercept surveys… In the original survey… The interviewer handed…qualified respondents a white card as shown below.

GOLDEN LEGS

HOSIERY FOR WOMEN AND CHILDREN

After viewing the card, each respondent was asked the following question: “What company do you think puts out that brand of hosiery?” Respondents who answered something other than “don’t know” to the first question were then asked: “Why do you say that?”

A second control group of…respondents saw a different control name (Golden Step, Golden Spirit, Golden Sheers, Golden Fit, Golden Touch or Golden Kicks), and then were asked the same two questions...the purpose of this control group was to control the survey for “noise,” that is, the tendency of consumers in this particular situation to attribute manufacture to L’EGGS because it is a familiar brand.

… Respondent countered with…testimony…essentially criticiz[ing] the

methodology used in conducting the survey. More specifically, he stated that the survey’s instructions encouraged guessing; that the card bearing respondent’s mark which was shown to the respondents omitted the category of men’s hosiery products… In response to two of these criticisms, namely the encouragement of guessing and the perceived misidentification of the product category on the sample card, petitioner…undertook a replication survey. Accordingly, the stimulus card shown to respondents indicated that the GOLDEN LEGS product is “hosiery for men, women and children”…The instructions were modified in relevant part to read “For any of my questions please give me an opinion if you have one, but if you don’t know or have no opinion, that’s OK”…

The replication survey…shows results which are very similar to the results of the original survey…

… Petitioner’s surveys employ a fairly standard format used in likelihood of

confusion cases, the so-called Eveready format…This survey format has been approved by a number of courts…We find that the surveys here support petitioner’s position on the issue of likelihood of confusion.

Cache, Inc. v. M.Z. Berger & Co., 2001 U.S. Dist. LEXIS 226, *33-*33 (S.D.N.Y. 2001)

A survey is probative and may be admitted into evidence to establish actual confusion if it is “fairly prepared and its results directed to relevant issues.”

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Sterling Drug, Inc. v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (quotations omitted). Errors in methodology properly go to the weight of the survey evidence. See Schering Corp. v. Pfizer Inc., 189 F.3d 218, 227-28 (2d Cir. 1999); Lois Sportswear, 799 F.2d at 875. A survey, however, should be excluded under Fed.R.Evid. 403 where it is so flawed in methodology that its probative value is substantially outweighed by its prejudicial effect. See Schering, 189 F.3d at 228; Starter Corp. v. Converse, Inc., 170 F.3d 286, 297 (2d Cir. 1999); Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334, 336 (S.D.N.Y.1995).

The defendants challenge the methodology used in the plaintiff’s survey and argue that the survey does not support a showing of likelihood of confusion, but, despite the survey’s flaws, the survey does not appear to be devoid of all probative value on the issue of the likelihood of confusion…The survey results still have some relevance to the issue of how potential purchasers would react when presented with [Defendant’s] “CACHE” watches. Any flaws in the survey are factored into the weight to be given to the evidence. The survey results, together with the anecdotal evidence of actual confusion, lend support to the plaintiff’s argument of actual confusion, which supports the plaintiff’s contention of a likelihood of confusion.

Beverage Marketing USA, Inc. v. South Beach Beverage Corp., 2000 U.S. Dist. LEXIS 16504, *5-*7 (S.D.N.Y. 2000)

The Court next considers plaintiffs’ trade dress claims…

… …defendants are entitled to summary judgment dismissing the trade dress

claims because there are no facts in dispute sufficient to support a likelihood of confusion between the plaintiffs’ and defendants’ bottles. Comparing the bottles, with the labels properly on them, unlike plaintiffs’ survey comparison of the bottles with that very significant element of their trade dress removed, the Court holds that a reasonable jury properly considering the aforementioned factors, could not find a likelihood of confusion…

Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360, 368 (S.D.N.Y. 2000)

Finally, the evidence of actual confusion plaintiff repeatedly refers to is illusory. The survey conducted by plaintiff’s expert merely proved that there were significant visual similarities between Petoskey and Colonnade…[Plaintiff’s] survey did not, however, account for the reality that plaintiff’s and defendant’s products are bought using catalogs that, unlike the pictures used in the survey, clearly identify the manufacturer…

Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212, 1219-1220 (C.D. Cal. 2000)

The survey concludes that 49.5% of the respondents “perceived that proceeds from, or authorization for, the sale of the advertised Diana, Princess of Wales memorabilia went to, or was authorized by, Diana, Princess of Wales

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and/or her family, estate, Foundation or other legal entity (other than the Franklin Mint).”…Without a specific percentage reflecting the number of respondents expressing confusion as to the plaintiffs’ endorsement of defendants’ product, the survey is not beneficial to the Court’s analysis.

… …the…result was tabulated by counting any answer given by a respondent

to a question that “reflected an understanding that the ‘family,’ ‘estate,’ ‘Foundation,’ or other similar entity was thought by respondent to have participated in the sale” of the product…Initially, this method is problematic because the “participation” of neither the “family” nor “other similar entity” is at issue in this case. Moreover, each question following the first dealt with who would receive proceeds from the sale of the product. Answers to the charity-related questions are irrelevant to determining actual confusion over the plaintiffs’ endorsement of defendants’ products…

Finally, respondents’ answers may have been tainted because they were shown three advertisements of [Defendant’s] products: an Elvis Presley statue, a Marilyn Monroe doll and the Princess Diana doll. The Presley advertisement states that it is “authorized by Graceland” and identifies Elvis Presely Enterprises as the trademark holder.…The Monroe advertisement states that it is “Fully authorized by the Estate of Marilyn Monroe” and identifies trademark holders…These advertisements may have led respondents to assume that because the Presley and Monroe products were “authorized” and contained trademark protected aspects, that the Princess Diana doll required similar authorization or permission…the Court would attribute little weight to the results because the survey method provided respondents with information that may have led them to assume that authorization or permission to use Princess Diana’s image was necessary.

Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033, 1039, 1041, 1043, 1049, 1050 (S.D. Ind. 2000)

The case is now before the court on SPG’s motion in limine asking the court to find in advance of trial that the results of proposed consumer surveys on possible consumer confusion will be admissible at trial.

… Simon’s motion in limine also asks the court to perform before trial a

variation of the gatekeeping function the court must perform for expert testimony under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 591, 113 S.Ct. 2786, 125 L.Ed.2d 469 (1993)…

… In…[Plaintiff’s proposed] survey, the respondent is first shown a card

depicting… [Defendant’s] mySimon home page...the interviewer takes back the mySimon card, hands the respondent a card depicting…[Plaintiff’s] SPG home page…both cards are placed out of the respondent’s sight. The interviewer then asks “Do you believe that the two web pages just shown to you are put out by (a) Two unrelated sources, companies, or organizations; (b) The same source,

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company, or organization; (c) Related but different sources, companies, or organizations; or (d) Don’t know?” If the respondent answers (a), (b), or (c), the interviewer then asks “Why do you say that?” and “What else?” …[Plaintiff’s] proposed…survey suffers from three serious flaws: (a) it grossly distorts the “marketplace conditions” in which Internet users might actually encounter the two parties’ marks together; (b) it fails to use the most basic control by failing to compare potential confusion with respect to other “Simon” web sites not related to either of these parties; and (c) it is designed to create “demand effects” that will appear to exaggerate unfairly any possible confusion about affiliation between SPG and mySimon. Although no survey is beyond criticism, these problems are so fundamental that the court does not believe it would be fair to treat them as matters going only to the weight of the evidence. They are so basic as to strip the proposed survey of any significant probative value. The court concludes under Rule 702 and Rule 403 that the proposed…survey should be excluded from evidence.

… …the proposed survey [is] nothing more than a meaningless memory

game or word association exercise that bears no relationship to the marketplace. …

…[Plaintiff’s] experts have opined that a survey in the Eveready format would not be appropriate for this case. In the Eveready format… Union Carbide Corp. v. Ever-Ready, Inc., 531 F.2d at 385-86, a consumer would be exposed to only mySimon’s mark, home page, or other stimulus, and would then be asked “Who do you think puts out this service? What makes you think so? Name any other products or services put out by the same concern that puts out this service.”…

…[Plaintiff’s expert] asserts the Eveready format is most appropriate where specific products are involved and would be “very difficult to adapt to an extremely dynamic INTERNET service oriented marketplace.”…With all due respect…this is simply not an explanation at all. It would seem to be a relatively simple matter to design a survey that exposes a respondent only to mySimon’s web site or advertising, to ask who the respondent thinks puts out that service and what other services it provides, and then to see how many respondents come up with SPG or a recognizable variation…

Teaching Co. Ltd. Partnership v. Unapix Entm’t, Inc., 87 F. Supp. 2d 567, 584 (E.D. Va. 2000)

…The results indicated that approximately sixteen percent of those surveyed were confused (net of control confusion) based on the common name of the products…This survey evidence supports a finding of a likelihood of confusion under Section 43(a) of the Lanham Act. See, e.g., Sara Lee, 81 F.3d at 467 n. 15 (stating that survey evidence showing a level of confusion between ten and eleven percent is sufficient to demonstrate actual confusion) (citing Mutual of Omaha Ins. Co. v. Novak, 836 F.2d 397, 400 (8th Cir. 1987)).

…

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Although Defendant presented an expert to challenge…[Plaintiff’s survey] results… [Defendant’s expert] acknowledged that the best way to determine whether the alleged design flaws… identified had any effect on the outcome would be to conduct an alternate survey. However, [Defendant] did not present any alternative survey…[Defendant] had ample opportunity to conduct a “proper” survey on likelihood of confusion, since it had completed a survey purportedly addressing secondary meaning by the end of July.

Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 322 & n.17 (S.D.N.Y. 2000)

…the defects of the…[Defendant’s] survey’s universe become immediately apparent.

First, the universe was defined as persons who had purchased fragrances in the preceding twelve months rather than persons who intended to purchase fragrances in the future…Thus, the survey improperly excluded prospective purchasers…

Second, the survey improperly focused on the fragrance market rather than on the jeans or casual clothing market…traditional rather than reverse confusion is at issue. Accordingly, the relevant market is the purchasers of jeans or casual clothing, and not the purchasers of fragrances.

n.17…[Defendant] contends that a person who is not aware of Paco Rabanne cannot be confused at all, and, therefore, is irrelevant to the actual confusion analysis…The Court finds [Defendant’s] approach, limiting its universe to consumers aware of its products, inappropriate because even a weak brand could demonstrate a high degree of confusion because of the limited nature of the universe being surveyed…

Thane Int’l Inc. v. Trek Bicycle Corp. 53 U.S.P.Q.2d 1523, 1531-1532 (C.D. Cal. 1999)

…[Plaintiff] can only supply evidence of actual confusion in a contrived “survey” environment quite unlike those environments in which customers would actually encounter the marks at issue in this action. The pictures employed by…[Plaintiff’s expert] to conduct…[this] survey do not strike this Court as accurately replicating the environments in which consumers would encounter the parties’ marks…

Fort James Corp. v. Kimberly-Clark Tissue Co., 1999 U.S. Dist. LEXIS 16321, *16-*18 (N.D. Ill. 1999)

At the Rule 16 Conference…[Plaintiff] presented a preliminary consumer survey that purported to measure the likelihood of product confusion among…consumers. [Defendant] suggested that the universe of consumers used by [Plaintiff] was underinclusive. Both parties have indicated that they will likely gather additional survey evidence. In order to conserve resources and focus discovery, we agreed to take briefs on the relevant universe of such consumer surveys.

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Before reaching the merits…we must answer…[Plaintiff’s] procedural objection. [Plaintiff] correctly points out that neither party has brought a motion in limine. [Plaintiff] argues that, because we may not issue advisory opinions, we should not address the propriety of any particular survey design. We disagree. Because conducting consumer surveys often involves a great expense of both money and effort, we believe the court should be willing to provide guidance when requested to do so. Indeed, the Seventh Circuit has explicitly approved of this practice. See Union Carbide Corp. v Ever-Ready Inc., 531 F.2d 366, 386 (7th Cir. 1976) …Because the parties cannot agree on survey methodology, we believe it is appropriate to offer our thoughts. [Plaintiff] would like to survey only people who identify themselves as users of its product… [Defendant] suggests that only survey evidence drawn from a universe of all bathroom tissue consumers is appropriate.

…an examination of the plaintiff’s apparent theory of liability…suggests, quite clearly, that [Plaintiff’s] theory of the case involves confusion among all consumers of bathroom tissue. In order to determine whether confusion exists among all such consumers, the entire bathroom tissue consumer marketplace would be the logical universe from which to draw a sample…

Winner Intern. LLC v. Omori Enterprises, Inc., 60 F. Supp. 2d 62, 70-71 (E.D.N.Y. 1999)

To establish likelihood of consumer confusion, plaintiff relies on a survey [reflecting]…that sixty-seven percent of the respondents associated defendants’ device with The Club and thirty percent associated it with Global America…

… The most significant flaw in this study is that it has nothing to do with

trade dress. There is no way to tell whether those who answered “The Club” responded that way because “The Club” has become a generic name for steering wheel locking devices, because they do not know The Club has competitors, because they simply guessed at the name because it is a famous brand, or because the trade dress--the way the product was presented in the package--was confused with that of The Club. In other words, there is no way to determine whether respondents answered “The Club” for non-trade dress reasons…

… …To be meaningful a survey should show the reason that each

interviewee found confusion… Westchester Media Co. L.P. v. PRL USA Holdings, Inc., 103 F. Supp. 2d 935, 965-968 (S.D. Tex. 1999)

For…trial…[Defendant]…commissioned…[a] survey…to determine the percentage of consumers, if any, who are likely to believe that the New POLO Magazine is published by, sponsored by, authorized by, or affiliated with [Defendant]. The…survey respondents were…divided into two groups, one a test group, and one a control group. Interviewers showed the test group…a copy of

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the…New POLO Magazine, and the control group…was shown a copy of the July 1998 issue of Polo Players’ Edition…

In response to several open-ended… questions…53% of the test group believed that [Defendant] had authorized, approved, or produced the New POLO Magazine, as compared with only 22% of the control group, who believed that [Defendant] had authorized, approved, or produced Polo Players’ Edition… [Plaintiff’s] survey found an incremental rate of confusion of 31%…

…these rates of confusion were even more striking among those respondents who were familiar with publications which are said to compete directly with the New POLO Magazine…Among this group of readers, a higher level of incremental confusion, 34%, was present…[Additionally] among those… respondents who reported income of more than $70,000 per year, a 40% incremental confusion level was found. The court accepts [Plaintiff’s] assertion that it is that particular audience which it hopes to attract to its New POLO Magazine…

… The court also concludes that…the… presentation of stimuli to the survey

respondents [in Defendant’s survey] was suspect in several aspects…[Defendant’s expert]…asked the respondents to view an “array” of various goods in two different displays…In spite of…[Defendant’s expert’s] recitation that it is desirable, in an array survey, to replicate actual market conditions… [Defendant’s expert] admitted that the product displays that…[were] used were quite different from the actual marketplace…

… …In a survey which tests the likelihood of confusion, a control is used “to

determine the noise--the inherent confusion in the market which exists independently of and thus is not caused by confusion between the products being tested.”…

Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242, 253-254 (S.D.N.Y. 1999)

In the first confusion study submitted by [Plaintiff]...[a]pproximately 24 percent of those surveyed identified the pre-launch ROMANCE bottle as ETERNITY or as a Calvin Klein product...Despite this result, the survey’s probative value is quite limited given: (1) the survey’s universe, (2) the survey’s stimulus, and (3) the survey’s presentation of the stimulus and control bottles. ...The universe tested by [Plaintiff’s] expert...was flawed and led to skewed results for several reasons: (1) it excluded all men and women over the age of forty-five who represent a substantial portion of the total universe of the products’ potential consumers;...(2) it included past purchasers who were not necessarily future potential purchasers;...and (3) it failed to properly discriminate between purchasers of “prestige fragrance” brands as opposed to those who purchase just any fragrance... To have substantial probative value, a survey...must also be designed to examine the impression presented to the consumer by the accused product...The ROMANCE bottle shown to the survey’s respondents was the “pre-launch

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bottle,” not the one consumers would eventually see with a collar label that reads “RALPH LAUREN ROMANCE.”... Similarly, [Plaintiff’s] presentation of the various stimuli and controls,...including the accused bottle, failed to properly replicate marketplace conditions in which the respondents would encounter the products...[Plaintiff], in an effort to present the accused product in its proper marketplace context, should have, at the very least, presented to the participants, the various fragrance bottles with their respective boxes...

Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296, 306 (S.D.N.Y. 1999)

Finally, [Defendant] also asks for $20,600 for consumer survey costs... While other courts have disallowed the reimbursement of consumer survey costs, this Court will permit them. See Simon & Schuster, Inc. v. Dove Audio, Inc., 970 F. Supp. 279, 302 (S.D.N.Y. 1997); Imagineering, Inc. v. Van Klassens, Inc., 851 F. Supp. 532, 540; Gillette Co. v. Wilkinson Sword, Inc., No. 89-CV-3586, 1992 WL 30938, at *10 (S.D.N.Y. Feb.3, 1992). In Simon & Schuster, the court highlighted that “plaintiffs [did] not demonstrate that they [were] entitled to recover the costs of conducting their consumer survey” and that the survey was “minimally probative.” 970 F. Supp. at 302, n. 23. In Imagineering, of the two surveys plaintiffs prepared, the court excluded one from trial while plaintiffs did not introduce the other. 851 F. Supp. at 539. Here, this Court accepted consumer surveys from both parties and found them to be informative and helpful in the advancement of their claims. This Court also relied on the presented surveys in adjudicating this case and specifically stated that “the market surveys entered into evidence suggest actual confusion.” Unger, 14 F. Supp. 2d at 356. Thus, this Court authorizes the recovery of [Defendant’s] consumer costs.

Hermès Int’l v. Lederer de Paris Fifth Avenue Inc., 50 F. Supp. 2d 212, 221, 222 & nn.20 & 21 (S.D.N.Y. 1999)

[Plaintiff] commissioned...[an expert] to conduct a post-sale confusion survey. [Plaintiff’s expert] concluded that there was a strong association between the Kelly bag design and its source (as well as a high probability of confusion between defendants’ and [Plaintiff’s bags)...According to [Plaintiff’s expert], 70% of the 47 respondents who were shown [Defendants’] Kelly bag (as carried by a woman walking at a distance of four feet) identified [Plaintiff] as the manufacturer...45% of the respondents who identified [Plaintiff] as the source of the [Defendant] knock-off, explicitly and voluntarily mentioned the Kelly name… n.20...[Plaintiff’s expert] used Coach and Ferragamo bags as controls. These bags were mistaken for [Plaintiff’s] bags by only 9% of respondents. Only 4% of the respondents correctly identified [Defendant] as the maker... …Defendants criticize the accuracy of the survey results on several grounds, including the suggestibility of the survey and that...[Plaintiff’s expert] incorrectly interpreted some responses…

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n.21…Respondents were intercepted randomly on East 57th Street in Manhattan (the [Plaintiff’s] boutique also happens to be located on East 57th Street)...Eligible respondents were then invited to tea in a private room at the Four Seasons Hotel and given $150 for their participation in the 15 minute survey... While the...[Plaintiff’s] survey may not be reliable, a properly conducted survey might result in some evidence of single source identification. Defendants’ failure to offer its own consumer study supporting its argument that [Plaintiff’s] designs are generic weakens their abandonment defense...

Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827, 829 (8th Cir. 1999)

By contrast...[Defendant’s] marketing and consumer research expert, declared [Plaintiff’s] survey biased and invalid... Despite these criticisms, however, [Defendant’s expert] offered no opinion about the likelihood of confusion or possible association between Lean Cuisine and Michelina’s Lean ‘N Tasty. Additionally, although [Defendant’s expert] advocated conducting a competent survey, [Defendant] did not retain either [its expert] or another expert to do so...

Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690, 699-700 (S.D.N.Y. 1999)

...The results of plaintiffs’ study indicate a 14% level of confusion between the products... ...The court finds that plaintiffs’ methodology was flawed because its study was not targeted to the specific question of confusion between “Ice Breakers” and “Dentyne Ice.” Plaintiffs’ study used advertisements of the products, instead of the actual products, which could have lead to unreliable results. Both “Ice Breakers” and “Dentyne Ice” use similar advertising themes that play off the cool, breath freshening qualities of their gums. Plaintiffs’ study did not control for this unintended consequence...

Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561, 570, 572, 578 (E.D.N.Y. 1999)

To establish likelihood of consumer confusion, plaintiff relies on...three consumer surveys... ... ...the court finds the studies flawed and the survey results untrustworthy and unreliable. First, ...[Plaintiff’s expert] selected a universe for the surveys that was over- inclusive. The survey universe for all three studies was defined as “users or buyers of sugar substitutes within the past six months.”... ...[Plaintiff’s expert] says that past users are good proxies for future purchasers. This may be true for some products. But in the case of sweeteners, the assumption is... questionable. Plaintiff’s...and... defendant’s...packets are available at most diners and coffee shops and many restaurants. A high

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percentage of past users of sugar-substitutes may never have purchased sugar substitutes and have no intention to do so in the future... It was also improper to use all past “sugar-substitute” users without distinguishing between saccharin and aspartame users. As noted earlier, there is little overlap between saccharin and aspartame users. Despite EQUAL’s instant success upon introduction in 1982, Sweet’N Low sales remained relatively stable because demand for EQUAL came almost entirely from people who had previously never used sweeteners. Thus, past users of saccharin are unlikely to be potential purchasers of aspartame sweeteners and vice versa. In addition,...[Plaintiff’s expert’s] choice of so-called “controls” in the first two surveys was inappropriate. Given the unreliability of his controls, a sounder analytical approach was to review the reasons respondents gave for thinking that NutraSweet was made by the same company that made NatraTaste and to disregard the people who said they were confused for reasons unrelated to trade dress...The third survey was flawed because, among other reasons, it failed to resemble actual market conditions. The leading nature of the questions asked and the lack of instructions against guessing flawed all three surveys.

... ...[Plaintiff’s expert] conducted a third survey to assess the likelihood of confusion...Respondents were shown a Sweetmate package from a distance of three feet and not allowed to handle the box or to view it from a closer distance. Then the package was removed from view.

... ...In an actual market situation, the product would not disappear from the consumer’s eye just as he or she is about to make a purchase. Given the prominence of the name Sweetmate on its trade dress, it is highly unlikely that customers would think that the name of the product is “Sweet’N Low.” Question one was essentially a memory test.

IDV North America, Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815, 829-830 (E.D. Va. 1998)

First, the defendants assert that the survey results were not validated by a third party and therefore the survey is unreliable. That fact, however, does not affect the reliability of the survey because the method of validation did not violate industry practice... Second, the defendants argue that the survey is unreliable because the interviewers were not professionals in the survey field. That argument fails because industry practice does not prohibit the use of non-professional interviewers... Third, the defendants contend that the survey is invalid because it was conducted with reference to an inappropriate universe of survey participants...[T]he Court concludes that the limited universe of survey participants does not render the survey completely invalid. However, the failure to include in the survey persons who are in the market for both products rather seriously undercuts the credibility of the survey because it excludes those most likely to be aware that BAILEYS liqueurs are not made by a tobacco

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manufacturer. By excluding persons in the market for both kinds of products (tobacco and liqueur cordials), the survey contained a built in bias...

Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013, 1040-1042 (C.D. Cal. 1998)

...defendants have presented the results of double-blind telephone survey...[in which] only 6.9% of respondents [indicated any level of a likelihood of confusion]...Consequently, defendants’ survey suggests that there is little likelihood of confusion.

... ...the survey ultimately provides useful evidence regarding whether plaintiffs have a fair chance of success in proving that defendants’ advertisements are likely to confuse consumers as to the source or endorsement by plaintiffs of defendants’ products. ...plaintiffs have not submitted survey results, despite the opportunity to conduct such research both before seeking injunctive relief and before the continued hearing on the pending motion...[Plaintiff’s] failure to do so undermines their position that the advertisements at issue are likely to confuse consumers as to plaintiffs’ endorsement.

The CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775, 792-793 (D. N.J. 1998)

It is Professor McCarthy’s opinion that surveys are not helpful on the issue of confusion in the present case which concerns primarily reverse confusion. In a situation where the junior user (Citigroup) has not yet commenced massive use of its name and there has been no advertising or promotion of products and services under that name reverse confusion cannot be measured because the triggering event of market place saturation has not yet occurred. While this observation may be generally correct, it is not totally correct in the present case. The overwhelmingly dominant feature of Citicorp’s new mark, CITIGROUP, is CITI. That name alone and in combination with other names has saturated the market for many years without overwhelming The CIT Group name... ...Thus in the present case the survey evidence may be helpful in determining the likelihood of reverse confusion. It is unnecessary to decide whether it alone would be sufficient, because weighing the other factors led to the conclusion that adoption of the Citigroup name will cause neither forward nor reverse confusion in the market place.

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 544 & n.10 (5th Cir. 1998)

...[Defendant] argues that the survey was flawed because, by relying upon “permission,” it created the possibility that those surveyed believed that permission was required, thereby skewing the result. But the survey asked whether [Defendant] “did get” or “did not get” permission to use the Plaintiffs’ marks or to copy the Plaintiffs’ golf holes. This question asks what message

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[Defendant’s] use of the Plaintiffs’ marks and trade dress conveyed, rather than whether [Defendant] needed to get permission, which would focus on what those surveyed believed to be required. Although this latter form is more problematic because it allows for the consumer’s misunderstanding of the law... n.10...the district court did not err in relying upon the Plaintiffs’ survey asking whether permission was obtained. However, we note that “approval” is a word with an easily understood everyday meaning that could have been used just as easily in the survey or in questions asked of the witnesses. We do not hold here that the unfettered use of “permission,” rather than “approval” or other less ambiguous language, is always acceptable, and we caution litigants to consider the language of the survey and questions so that the consumer’s belief that permission is required does not skew the results of the survey, thus decreasing its probative value...

Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120, 1120, 1133-1134 (C.D. Cal. 1998)

Flaws in survey given to consumers in shopping malls, allegedly showing confusion over song that parodied fashion doll, went to survey’s weight, rather than its admissibility in toy manufacturer’s trademark infringement action; flaws included use of leading questions and absence of control group.

... The...[Plaintiff’s] survey includes a number of questions that Circuits courts have found to be inherently leading or biased and therefore should be given little if any weight as evidence of actual confusion...

... It is unclear from the results of this question...[“3. Who or what company, if any, do you think is connected with or gave permission for the music video and CD (the music CD) you just saw?”]...how many individuals who answered Mattel thought the company was “connected” with the song and how many thought the company gave its permission. The use of the term “connected with” is not relevant in the context of parody, as parodies evoke the object that they are poking fun of and therefore...are often linked or connected to that object in the public’s mind...

Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914, *25, *26 n.6 (N.D. Ill. 1998)

...[Plaintiff’s expert] also conducted tests of post-sale confusion...In his post-sale confusion test, [Plaintiff’s expert] removed the Laura Leather hang tags from the handbags and allowed the respondents to view, but not touch the bags...then followed the same procedure with the Kenneth Cole handbags [control]...After showing these sets of handbags to the respondents,...[Plaintiff’s survey] asked who respondents believed to have manufactured the handbags.

... n.6...[Plaintiff’s expert] also conducted a point-of-sale confusion test, in which respondents were shown the Laura Leather and Kenneth Cole handbags

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with the Laura Leather and Kenneth Cole hang tags still attached and were permitted to touch and feel the bags and to look inside them at the names embossed therein...

Breuer Electric Mfg. Co. v. Hoover Co., 48 U.S.P.Q.2d 1705, 1715 (N.D. Ill. 1998)

...[Plaintiff] claims that showing the picture of the Hoover WINDTUNNEL alone to respondents, after taking away the portfolio showing a variety of vacuums, unfairly focused the respondents’ attention on Hoover. Certainly for the question about who manufactures the Hoover WINDTUNNEL, there is no bias in showing a picture of the WINDTUNNEL with the “by Hoover” featured on the vacuum. This indication of source is displayed on the vacuum and on the box of the vacuum, so consumers are exposed in a similar manner as the survey respondents...

... [Plaintiff] also objects that the question about connection or association is incomplete, as it fails to address whether the respondents might have believed that there was an “affiliation” between [Defendant’s WINDTUNNEL vacuum] and [Plaintiff] or that [Plaintiff] was involved in “sponsorship” or “approval” of [Defendant’s] WINDTUNNEL vacuum. While [Plaintiff] is correct that [Defendant’s] survey did not inquire as to all of the terms in 15 U.S.C. Section 1125, the questions about two of them, “connection” and “association,” yield probative results...The terms “connection” and “association” are sufficiently broad that, outside the hypertechnical readings of zealous attorneys, they are likely to reveal whether the respondents believe there is any relationship between [Plaintiff] and [Defendant].

Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339, 357 n.16 (S.D.N.Y. 1998)

n.16 [Plaintiffs’] confusion survey demonstrated confusion among consumers in that it found that 49% of telephone respondents answered affirmatively when asked whether they had heard of Return...Twenty-five of those respondents said they had seen Return while 40% either described Bridge or said Return was a sequel to Bridge...Defendants’ experts’ surveys indicated that consumer confusion was only approximately 7.3%,...a level that Defendants contend is too minimal to support a finding of a likelihood of confusion. However, Defendants’ contention ignores case law that has held otherwise. See Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 365 F. Supp. 707, 716 (S.D.N.Y. 1973), aff’d, 523 F.2d 1331 (2d Cir. 1975) (holding that a confusion level of 7.7% was sufficient to support a finding of a likelihood of confusion).

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Westchester Media Co. L.P., et al. v. PRL USA Holdings, Inc., et al., 1998 U.S. Dist. LEXIS 11737, *14 (S.D. Tex. 1998)

The Court finds merit in [Plaintiff’s] objections to the format of the questions, and concludes that the...[Plaintiff’s] survey did little more than “allow the respondents to advise whether, upon viewing the magazine, it brought anything else to mind.” Such surveys “are given little weight” because they do not adequately account for responses that are attributable only to the word at issue...[W]ithout pertinent follow-up [e.g., Why do you say that?] inquiries or preliminary questions, the court has little guidance as to exactly what the respondents were reacting to...

Graham Webb Int’l v. Helene Curtis Inc., 17 F. Supp. 2d 919, 930 n.14 (D. Minn. 1998)

n.14. Defendants also point to [Plaintiff’s expert’s] failure to survey Midwest consumers, and failure to use third party products as a control.

Continental Plastic Containers Inc. v. Owens-Brockway Plastic Products Inc., 141 F.3d 1073, 1080-1081 (Fed. Cir. 1998)

...The district court found that the relevant consumer base was wholesale purchasers of empty bottles without lids or labels...the district court noted, the wholesale purchasers may be characterized as sophisticated buyers... [Plaintiff] argues that [Plaintiff’s] relevant market includes the ultimate retail consumer...

The district court properly rejected this data on the basis that these consumers are buying juice, not plastic bottles...“the proper inquiry centers on the

confusion of consumers in the market for the particular product at issue.”...

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FALSE ADVERTISING SURVEYS LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879, *14-15 , *17 (N.D. Ill. 2010)

[Plaintiff] next contends that the Court should exclude [Defendant’s expert’s] opinions because courts typically do not rely on surveys to show that a challenged advertisement is not material in a Lanham Act case…

… …In rejecting this argument, however, the Seventh Circuit did not

-- as [Plaintiff] argues -- hold that as a matter of law a party cannot submit surveys to refute materiality in these cases…

Campagnolo S.R.L. v. Full Speed Ahead,Inc., 2010 U.S. Dist. LEXIS 46176, *27-*28 (W.D. Wash. 2010

False statements in an advertisement are material if they are likely to influence the purchasing decision...[Plaintiff’s expert’s] report indicates that relevant consumers were influenced by weight claims standing alone and that stiffness, stiffness-to-weight ratio, and weight are the first, second, and fourth most important characteristics consumers consider when purchasing a crankset. This is sufficient for a finding of materiality. Additionally, a plaintiff may establish materiality by showing that advertisements misrepresent an “inherent quality or characteristic” of the product...Weight and stiffness-to-weight ratio are important and inherent qualities of cranksets. Accordingly, a jury could conclude that the false statements were material.

Schering-Plough v. Neutrogena, 702 F.Supp.2d 266, 275 & n.10 (D.Del. 2010)

[Plaintiff’s expert’s] testimony was brief and summary-level, and the

details of [Plaintiff’s expert’s] methodologies are not readily apparent from his testimony or plaintiff's briefing. [Plaintiff’s expert] testified that the methodology he used is contained in his expert report, however, the report was admitted into evidence with all of the narrative sections redacted. [n.10 Apparently, plaintiff redacted all of the text preceding the “results” portion of [Plaintiff’s expert’s] report in response to an objection by defendant prior to trial.] The court declines to accept [Plaintiff’s expert’s] testimony on this record and, therefore, finds that plaintiff has not met its burden to prove actual consumer deception.

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Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 702 F.Supp.2d 238, 247, 250-251, 253 (D. Del. 2010)

In its papers, plaintiff argues that defendant’s use of the name “Havana Club” is misleading…Plaintiff’s case is built around testimony regarding a survey taken by its expert...As explained by [Plaintiff’s expert] at trial, this survey purports to establish that defendant’s use of “Havana” in the Havana Club name deceives a significant number of likely rum purchasers into believing that defendant’s rum is made in Cuba…

… An ad that is truthful on its face cannot be proven to be misleading by surveying customers…As the Seventh Circuit has explained, survey research does not determine the meaning of words or “set the standard to which objectively verifiable claims must be held.” Mead Johnson...

[I]nterpreting “misleading” to include factual propositions that are susceptible to misunderstanding would make consumers as a whole worse off by suppressing truthful statements that will help many of them find superior products. A “misunderstood” statement is not the same as one designed to mislead. Reducing ads and packaging to meaningless puffery can’t be the objective of the Lanham Act -- though it is a logical (and likely) outcome of [plaintiff’s] approach, given the normal level of confusion and misunderstanding reflected in consumer surveys.

…The Havana Club label clearly and truthfully provides the origin of defendant’s rum, and is not deceptive…

… …The court concludes that defendant's Havana Club rum has a

Cuban heritage; defendant's Havana Club rum labels truthfully (and prominently) provide the geographic location of the product's manufacture (Puerto Rico); and the labeling, therefore, is neither false nor misleading…

PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18404, *12 (E.D. Va. 2010)

To prove implied falsity with a consumer survey, the survey must address the critical question in the case...Here, [Defendant] alleges that the “compare to” claim impliedly communicates the message that [Plaintiff’s] formulas is “identical in composition” to [Defendant’s] formulas. Testimony at trial showed that the ingredients of the parties’ products are very similar, but not identical, and that it is likely that the nutritional value of the parties’ products is nearly the same. In that context, the critical question is whether consumers understand the “compare to” language to make the claim that the formulas are indeed “identical,” not whether the

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ingredients are nearly the same, substantially the same, or any other gradation one could create. Despite that focus, [Defendant’s expert’s] surveys never used the word “identical” nor did the surveys probe what respondents may have meant when they said the products were the “same.” Instead, [Defendant’s expert] assumed that respondents who believed the parties’ products had all of the same ingredients would have selected “the same,” while respondents who believed the products had some or even most of the same ingredients would have selected “different.” For example, [Defendant’s expert] admitted that respondents who thought that ninety-five percent of the ingredients were the same could have chosen to say “same”—and, in [Defendant’s expert’s] view, would have meant “identical.”...That assumption, however is not warranted. By failing to account for the specific allegations in this case and consider obvious alternative explanations for the results, the surveys cannot provide the required evidence needed to prove implied falsity. And, without that evidence, [Defendant] cannot prevail on its Lanham Act claim...

LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357, *33, *35-42 (N.D. Ill. 2009)

To obtain a representative sample, [Plaintiff’s expert] conducted a double-blind, “mall-intercept” survey in 12 separate metropolitan markets representing each census region…The interviewers applied a pre-planned quota screening procedure designed to obtain a sample population roughly equivalent to male and female age groups based on the United States census…Each sample group--the test group and the control group--targeted 200 respondents, for a total sample population of 400 respondents…In practice, interviewers completed a total of 440 interviews…Each sample group met the same screening criteria and answered the same questionnaire…

The study questionnaire asked both open-ended and closed-ended questions…

… Focusing on the questionnaire and visual exhibits, [Defendant]

criticizes the [Plaintiff’s expert’s] study as leading and unreliable on three grounds. First, [Defendant] contends that the survey ignores the results of open-ended questions--questions that required respondents to answer in their own words…Second, [Defendant] argues that [Plaintiff’s expert] improperly bases his opinion solely on the result of the closed-ended question at the end of the survey, despite the lack of a filter question to screen out respondents who received no message from the commercial…Third, [Defendant] contends that the “control” commercial employed by [Plaintiff’s expert] was too different from the “test” commercial to eliminate “noise” from the survey results…

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To begin with, [Defendant] contends that open-ended questions are the “most probative evidence of any messages communicated by advertising,” and thus [Plaintiff’s expert] erred in failing to base his opinion on responses to these questions…The precedent cited by [Defendant], however, does not support uncritical acceptance of answers to open-ended questions… Open-ended and closed-ended questions serve different purposes and generally elicit different responses…Properly-drafted closed-ended, multiple choice questions are not inherently leading simply because they provide respondents with an explicit set of responses from which to choose—“closed-ended questions may remind respondents of options that they would not otherwise consider or which simply do not come to mind as easily.”…Thus, a non-leading closed-ended question is not improper merely because it explicitly provides respondents with a set of responses from which to choose--particularly where as here, the question allows respondents the option of choosing “don’t know/not sure,” in case they do not agree with any of the provided choices…(…this Court finds it reasonable in the context of the present case to rely on unbiased, closed-ended questions when adjudicating a false advertising claim.”)… Given that the universe surveyed--consumers of home laundry appliances--does not necessarily make appliance purchasing decisions impetuously, the closed-ended question may provide relevant information beyond what first pops into the minds of respondents. The jury thus will be free to weigh the utility, if any, of the closed-ended question along with the open-ended question and the survey as a whole. Given the facts in this case, the mere existence of the closed-ended question does not render the survey inadmissible. Similarly, given that the purpose of a filter question is to reduce guessing…the Court rejects [Defendant’s] criticism of the lack of filter questions--the [Plaintiff’s expert’s] Study’s use of “don't know” in the close-ended question sufficiently mitigates this concern to permit admission of the survey. [Defendant] also takes issue with the control advertisement employed by [Plaintiff’s expert]. In particular, [Defendant] contents [sic] that, rather than editing the test commercial, the [Plaintiff’s expert’s] Study improperly used as a control another commercial for [Defendant’s] Duet Steam Washer and Dryer. The purpose of a control is to eliminate “noise”--to reduce the impact of respondents’ preexisting impressions on their answers and focus the survey on the proposition the study is designed to test…To be relevant, a proper control should be similar to the test group and:

share as many characteristics with the experimental stimulus as possible, with the key exception of the characteristic whose influence is being assessed. A survey with an imperfect control group generally provides better information than no control group at all, but the choice of the specific control group requires some care and should influence the weight that the survey receives.

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…Although the [Plaintiff’s expert’s] Study’s control commercial used different imagery, the commercial aired contemporaneously with the test commercial and otherwise covered the same [Defendant’s] product that the test commercial addressed… In sum, [Defendant’s] criticism addresses the weight of the [Plaintiff’s expert’s] Study, rather than its admissibility…The court thus denies [Defendant’s] motion to exclude [Plaintiff’s expert’s] testimony…

Rexall Sundown, Inc. v. Perrigo Co., 651 F. Supp. 2d 9, 36-37, 39 (E.D.N.Y. 2009)

It is well settled that, when a plaintiff is seeking to proceed on a claim of implied falsity, “a plaintiff must demonstrate, by extrinsic evidence, that the challenged commercials tend to mislead or confuse consumers.”… [Defendant] argues that the NAD and National Advertising Review Board (“NARB”) decisions, themselves, constitute extrinsic evidence that the statements are misleading. The Court finds this argument unpersuasive. The Second Circuit has clearly stated that the purpose of extrinsic evidence that a statement is misleading to consumers is largely to avoid having “the judge determine, based solely upon his or her own intuitive reaction, whether the advertisement is deceptive…”...Simply substituting the findings of the NAD and NARB decision-makers for that of the district judge would not be consistent with the Second Circuit’s guidance. Moreover, the NAD and NARB decisions make no finding of consumer deception, nor do they make a finding of a likelihood of consumer deception…to the extent [Defendant] is attempting to rely upon such findings for the truth of the matter asserted, [Defendant] has failed to explain how the NAD and NARB decisions could even be admitted under the Rules of Evidence. These findings, like judicial findings, are generally characterized as inadmissible hearsay that cannot be used to prove the truth of the matter asserted…Finally, [Defendant] has been unable to point to any case in the United States, either in its brief or at oral argument, where NAD and NARB findings have been found to constitute admissible extrinsic evidence that could support an implied falsity claim…cases that have found sufficient evidence of consumer deception have relied upon surveys of potential consumers or evidence provided by consumers who were actually misled. Although the use of other extrinsic evidence of likely consumer deception is not foreclosed, defendant has put forth no such admissible evidence…

… To survive [Plaintiff’s] motion for summary judgment with respect to Claim 5, [Defendant] must show that the statement is material. [Plaintiff] argues that the [Defendant’s expert’s] survey “confirms that there is no statistically significant difference in the levels of purchase interest manifested by respondents exposed to an altered version of [Plaintiff’s product’s] packaging including Statement 5 and respondents

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exposed to a similar stimulus from which that Statement was deleted.”…[Plaintiff] thus argues that the “survey therefore establishes beyond any doubt that, in fact, [Plaintiff’s] Advertising Statement 5 is not likely to influence consumer purchasing decisions… The Court finds this argument to be unpersuasive…Although the survey concluded that consumers who saw the claim were not statistically significantly more likely to express interest in purchasing [Plaintiff’s product], the survey’s inability to find evidence that any confusion influenced the purchasing decision does not require a finding of immateriality as a matter of law. In other words, the fact that a portion of the survey may undermine [Defendant’s] position regarding materiality does not mean that materiality cannot be proven by other means. Unlike on the issue of consumer confusion, materiality need not be proven by extrinsic evidence such as consumer surveys. Moreover, as noted in connection with [Plaintiff’s] claim, materiality may be proven by showing that the misrepresentation related to an inherent characteristic of the product…

Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384, 445-448, 452-454 (D. N.J. 2009)

…During trial, [Plaintiff’s expert] testified regarding a survey that he conducted to determine physicians’ perceptions of [Defendant’s] website advertising…A total of 80 radiologists and 30 interventional cardiologists were interviewed and the survey referenced re-created web pages from the Visipaque portion of [Defendant’s] website… …The Court notes at the outset that [Plaintiff’s expert’s] survey is replete with problems that undermine the survey’s reliability…To state a few, the survey: (1) failed to identify the correct survey population by not asking survey respondents whether they were in any way responsible for the purchase of contrast media; (2) failed to use an adequate control mechanism to determine whether the respondents may have had preexisting or predominant views prior to viewing the advertisements that may have affected their decision; and (3) failed to correctly characterize certain statements made to the survey participants… Initially, the Court strikes [Plaintiff’s expert’s] survey as it pertains to the 30 interventional cardiologists interviewed. This is based on the fact that the web pages re-created…for the survey administered to the 30 interventional cardiologists were never produced at trial, nor were their contents testified to by a witness with personal knowledge. [Plaintiff’s expert] testified that he never saw the web pages that were re-created and used for the survey and neither counsel nor [Plaintiff’s expert] were able to produce the original email from [Plaintiff’s expert] which allegedly contained the web pages used in the survey… The Court also finds that [Plaintiff’s expert’s] survey with regard to the 80 radiologists is also fatally flawed and hence unreliable. First, the

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web page that was presented to the survey respondents did not contain a clickable link, as the actual [Defendant’s] website did, to view the abstract of the NEPHRIC study… …the survey [also] failed to identify the correct sample population; none of the survey questions established whether the participants were in any way responsible for the purchase of contrast media. Even without asking this question, many survey respondents independently stated that they were not involved in making the purchasing decision, and that their use of the product was mainly because the hospital uses that brand product, not because the respondent had any impact or influence on the purchasing decision. This is a critical flaw in the design of the survey, which makes it significantly less useful for determining whether consumers who were making the actual purchasing decision were deceived… Case law from this district as well as others supports the contention that [Plaintiff’s expert’s] survey needed control mechanisms to be reliable… Furthermore, the Court notes that in addition to other courts excluding expert testimony on similar grounds, another court specifically excluded one of [Plaintiff’s expert’s] surveys because it did not use a proper control group…Additionally, [Plaintiff’s expert] said that the main downside of using a control group is money, something that the Court finds to be disingenuous for this particular case, especially given the apparent staggering amount of legal fees and costs related to expert testimony… …Thus the Court excludes [Plaintiff’s expert’s] testimony in connection with his survey in its entirety.

… …[Plaintiff] contends that [Defendant’s expert’s] testimony…and related [Defendant’s] survey… ostensibly relating to a [Plaintiff’s] brochure and letter, were flawed in several respects, such that they render his opinions and testimony unreliable, lacking fit and otherwise of no help to the Court. [Plaintiff] incorporates its related motion in limine…and identifies the alleged flaws as follows: (1) the survey used three cropped and out of context snippets taken from a [Plaintiff’s] brochure…and a letter sent to doctors…; (2) the survey used the three snippets orally over the telephone despite the uncontested fact that the documents (and the snippets) were meant to be read (not heard) and handled and thus the survey did not in any way simulate marketplace conditions…; (3) certain of the survey questions misrepresented the snippet used…; (4) counsel for [Defendant] chose the snippets that were tested and helped design the survey… As to [Plaintiff’s] first contention, the survey withheld from the respondents large amounts of other essential visual, contextual and informational portions from the two documents that directly relate to the survey questions…The Court finds that the survey results thus have no

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probative value as to whether there was false or misleading advertising or the effect of any advertising on a customer, and as such, the [Defendant’s expert’s] testimony is excluded… As to [Plaintiff’s] second contention, the problem of presenting the material orally as opposed to in writing does present a problem, but only because all three snippets are difficult to understand when heard orally…Thus, [Plaintiff] argues that the survey has no probative value…The Court agrees. [Plaintiff’s] third contention is that certain of the survey questions misrepresented the snippet used…and suggested answers…rendering the survey unreliable, inconclusive and lacking fit to the facts in issue – i.e., whether ads were false or misleading, Again, the Court concurs. Fourth, [Plaintiff] contends that [Defendant’s expert’s] lack of objectivity was also confirmed by how he interpreted his results… …The Court agrees for all of the aforementioned reasons and excludes [Defendant’s expert’s] testimony.

The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857, *10, *12 & n.19, *13 (D. Utah 2008)

In the First Circuit case Cashmere & Camel Hair Mfrs. Institute v. Saks Fifth Ave,…the court held that because a defendant does not dispute that the statement is a literal falsity claim, the presumption of consumer deception in plaintiff’s favor and the defendant’s failure to present evidence to rebut the presumption satisfied the plaintiff’s burden of demonstrating consumer deception on its claim. Similarly, in the present case the presumption of consumer confusion arising from the literally false statement was unrebutted. Defendants argued that [Plaintiff’s expert’s] survey evidence, the only evidence on the issue, was not sufficient, but presented no evidence of their own to rebut either the presumption or the [Plaintiff’s expert’s] testimony. Therefore, the presumption by itself is sufficient for Plaintiff to meet its burden of demonstrating consumer deception…Thus,…in order to recover damages or obtain equitable relief under the Lanham Act, a plaintiff must also show that either: (1) the challenged advertisement is literally false, or (2) while the advertisement is literally true it is nevertheless likely to mislead or confuse consumers."… …the unrebutted presumption of consumer confusion arising from the literal falsity of the Amvox Message was sufficient to establish consumer confusion, the Court will address Defendants’ arguments on the survey evidence…[n.19 Some courts also apply a presumption of materiality upon a finding of literal falsity. See, e.g., Richard J. Leighton, Literal Falsity by Necessary Implication: Presuming Deception Without Evidence in Lanham Act False Advertising Cases, 97 Trademark Rep. 1286, 1291 n.19 (2007)(citing cases).]…Defendants argue that [Plaintiff’s expert’s] testimony is insufficient because he surveyed persons other than

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those who were known to actually have heard the Amvox message. As this Court noted in its Order denying Defendants’ Daubert challenge to the admissibility of [Plaintiff’s expert’s] testimony, such challenges to the survey are credibility challenges for the jury to resolve… Having reviewed the record, the Court finds that there was no need for evidence on consumer confusion or deception because the unrebutted presumption arising from the literally false Amvox Message satisfied Plaintiff’s burden to show consumer confusion or deception…

Trafficschool.com, Inc. v. Edriver, Inc., 633 F. Supp. 2d 1063, 1079 (C.D. Cal. 2008)

…[Defendant’s expert] noted problems with [Plaintiff’s expert’s]

survey, including that it failed to use a control, failed to instruct respondents not to guess, used improper and leading stimuli, and combined questions onto the same page…Furthermore, [Defendant’s expert] pointed out that [Plaintiff’s expert’s] survey did not provide the respondents with a view of the full DMV.ORG webpage so that respondents could scroll down and see the disclaimer if they so desired…The Court agrees that the lack of a control, and the failure to present Defendants’ webpage as an actual consumer would see it, including the disclaimer, are significant problems with [Plaintiff’s expert’s] survey…

CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139, 1144-1146 (C.D. Cal. 2007)

Here, Plaintiffs provide the Court with a pilot survey as preliminary evidence of consumer deception. The survey questionnaire asked consumers from four different cities to answer various questions after viewing both of Defendant’s challenged commercials. The survey involved answering questions “based only on what the consumer saw in the commercials, and not based on any independent knowledge the consumer might have.”…The survey asked, “Based on the commercials, does Angus beef refer to where on the cow the meat comes from, a type of cattle, neither statement is true, both statements are true, or you don't know?”…The survey generally asked consumers to select one of four potential answers to the questions posed about what the commercials said… Plaintiffs state that “a statistically significant number of participants were misled by the commercials into believing that Angus is a cut of meat rather than a breed of cattle, that Angus beef is an inferior type of meat, and that Angus beef emanates from the rear-end and/or anus of beef cattle.”…Defendant argues that the survey is unreliable, and these conclusions are therefore baseless…The Court agrees with Defendant that the survey should be given very little weight.

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The Ninth Circuit has stated that “surveys in trademark cases are to be admitted as long as they are conducted according to accepted principles.”…“Technical unreliability goes to the weight accorded a survey, not its admissibility.”…The weight and “evidentiary value of a survey’s results rest upon the underlying objectivity of the survey itself… Plaintiffs’ survey uses leading and suggestive questions, and consumers were not permitted to articulate their own impressions of the commercials. Typically, consumer perception surveys begin with open-ended questions that permit consumers to identify the primary message of a commercial and any source of deception…In Plaintiffs’ survey, the questions were unfairly framed as to beg the results that Plaintiffs ultimately received. Consumers were given responses that suggested the answers that Plaintiffs wanted. By providing the consumers with the suggested response, Plaintiffs increased the likelihood of biased results. Further, Plaintiffs’ survey is worded in such a way as to obscure whether any inference suggested by the commercial was negated because the consumer understood the joke. These deficiencies in the survey’s design weaken the relevance and credibility of the survey evidence to the point where it sheds little if any light on the issue of likelihood of deceiving consumers.

* Plaintiffs lack any evidence that establishes actual injury and causation. Plaintiffs’ survey does not address whether Plaintiffs will experience any particular harm. Rather, the survey questions ask consumers to give their general feelings about purchasing Angus burgers and do not explore consumers’ impressions on whether Plaintiffs, rather than any other competitors, would be damaged. Based on this evidence, the Court cannot conclude that Plaintiffs are harmed specifically by any potentially false or misleading representations in the commercial rather than just the mere advertisement of a competing product that attempts to use effective marketing techniques. Thus, this evidence is not sufficient to make Plaintiffs’ necessary showing of actual injury and causation.

Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 14780, *47-*48 (E.D. Pa. 2007)

[Defendant] argues that the survey evidence that [Plaintiff] intends to present does not demonstrate confusion among consumers about the meaning of “made from sugar.” [Plaintiff’s] burden is to prove that [Defendant’s] advertising has the tendency to deceive a substantial portion of the intended audience. Novartis, 290 F.3d at 590 (citing Johnson & Johnson-Merck Consumer Pharm. Co. v. Rhone-Poulenc Rorer Pharm., Inc., 19 F.3d 125, 129 (3d Cir. 1994). Courts have acknowledged that a “confusion rate” of as low as 7.5% to 10% may be adequate while a confusion rate of 15% is almost always deemed sufficient. Id. at 594 (confusion rate of 15% was sufficient, acknowledging that the Second

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Circuit Court of Appeals had indicated that a 7.5% rate of confusion would suffice); Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 466-67 & n.15 (4th Cir. 1996) (15 to 20% confusion was sufficient to establish “actual confusion…to a significant degree”); Goya Foods, Inc. v. Condal Distribs., Inc., 732 F. Supp. 453, 457 n.7 (S.D.N.Y. 1990) (9 to 10% confusion rate was sufficient to demonstrate “meaningful evidence of actual confusion”).

Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002, *22-*25 (S.D.N.Y. 2006)

The consumer survey purported to examine consumer perception of [Defendant’s] two television ads… The survey consisted of fourteen questions…The first five questions were open-ended…The open-ended questions were followed by two closed-ended questions….

… The open-ended format is well suited to surveys focusing on a simple and/or primary claims made in ads…“On the other hand, open-ended questions are likely to understate secondary claims, particularly where…those claims are also rather complex by virtue of being both compound and comparative.”…Thus, it was not inappropriate for [Plaintiff’s expert] to formulate proper, closed-ended questions in order to assess whether [Defendant’s] TV ads communicated the messages [Plaintiff] complains of, i.e., messages that concern secondary, complex, and implicitly comparative claims. But closed-ended questions, however helpful…can be leading and suggestive and require incorporation of several well-established mechanisms to minimize bias…For example, the questions ought to be rotated… Other forms of bias involving closed-ended questions include “yea saying,” “which is the tendency to give the answer the participant believes the interviewer is seeking.”…This effect can be mitigated through the use of a control question…(“The [Federal Trade] Commission has long recognized that a control of some kind is necessary for closed-ended questions and that…there is a potential for yea-saying inherent in the closed-ended question format.”). Control questions offer a “don’t know” or “no opinion” type of option, as part of a set of response alternatives to a closed-ended question…Such questions screen out respondents who may truly not have an opinion on the issue under investigation and minimizes guessing…[Plaintiff’s expert] neglected to include any “funnel,” “full-filter” questions…or “quasi-filter questions.” …What the women surveyed in the mall knew about fracture reduction and clinical testing is, in all likelihood, limited. Certainly, the challenged TV ads said nothing about either topic. Accordingly, the survey should have provided respondents with all possible options to any question (including the options of “neither” or “don’t know”)…The

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reliability of the answers elicited by the closed-ended questions is undermined by the survey failure to inform respondents that they could also respond in this way…

… A survey’s control attempts to address in part the possible biasing effect of the questioning and a respondent’s prior beliefs…In Lanham Act cases, courts accept as a measure of the message conveyed the difference between the results obtained in the test and the control…The control may simply purge the allegedly deceptive materials from the ad…Rather than eliminating the questionable material from the ads…[Plaintiff’s expert] chose a prominent disclaimer at the beginning of the ads as its control…The disclaimer was suggestive and implanted responses to closed-ended question… In addition to these structural and design inadequacies, the [Plaintiff’s] surveys had serious data collection flaws… These flaws…are fatal to the admissibility of the consumer survey. [Plaintiff’s expert] also conducted a telephone survey of physicians’ perceptions to the sales aid; and reported the results in January 2006…To date, [Defendant] has deployed three [product] sales aids: the first in April 2005 in connection with [the product’s] commercial launch, the second in October 2005…and the third in March 2006…As noted previously, [Defendant] is currently using the March 2006 revised sales aid…Thus, the survey does not study the sales aid currently in use. As a result, the physician survey, which focused [on] an earlier version of the sales aid, is completely irrelevant to the sales aid currently in use… …the physician survey lacked any control. [Plaintiff’s expert] maintained that a control group is unnecessary for sophisticated respondents like doctors, who are unlikely to “guess”…This is a marked departure from generally accepted market research practices… Second, the physician telephone survey suffered from the extensive and inappropriate probing…the probing indicates a suggestive implanting with regard to fractures…

… The sample size of the telephone physician survey involved only sixty-three respondents. [Plaintiff’s expert] said the primary reason for the small sample size was economic…This claim of economy is completely out of character with [Plaintiff’s] spending to beat [Defendant’s product] in the marketplace, to say nothing of the costs of this litigation. In any event, the sample size here is too small to be reliable… These reasons, plus others, are more than sufficient to determine that the physician survey results are inadmissible.

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Diamond Triumph Auto Glass, Inc. v. Safelite Glass Corp., 441 F. Supp. 2d 695, 708-709, 711 (M.D. Pa. 2006)

We find that [Plaintiff’s] evidence, which consists of [Plaintiff’s] expert report, the depositions of various policyholders, and various phone call recordings, does not create a genuine issue of material fact of “actual deception or at least a tendency to deceive a substantial portion of the intended audience.”…[Plaintiff’s expert’s] report outlines her research into general consumer behavior and her beliefs as to how consumers likely reacted to the [Defendant’s customer service representatives’] greetings and warnings…She conducted no survey into how consumers actually responded to the representations but reviewed a number of consumer depositions as well as recorded conversations with [Defendant’s customer service representatives]…Based on her experience and this evidence, she opined that the greeting led callers to believe that the [Defendant’s customer service representatives] were representatives of their insurance companies. She also believed that the warning regarding non-network pricing and services created “uncertainty,” which caused many callers to choose [Defendant] because its prices and services were guaranteed…

… An expert opinion is not the standard by which we measure actual consumer confusion…[Plaintiff’s expert’s] report falls short for this reason. “As an expert in consumer behavior, I was asked to evaluate the likely effect on consumer choice of the statements made by [Defendant].”…[Plaintiff], however, must demonstrate how customers actually do react, not how they could react…Thus, we conclude that [Plaintiff’s expert’s] opinion along with the consumer depositions and phone calls do not create a genuine issue of material fact of “actual consumer deception or a tendency to deceive a substantial portion of the population,” and we will grant summary judgment on the Lanham Act claim.

McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226, 244-245, 253 n.21 (S.D.N.Y. 2005)

…[Plaintiff’s expert] conducted three consumer surveys in connection with this case, in malls and shopping centers in ten different locations throughout the United States…

In the first survey, consumers were shown [Defendant’s television advertisement] twice and then asked a series of questions about the ideas that were communicated to them by the commercial. The survey found that 50% of the respondents took away the message that “you can replace floss with Listerine.”…

In the second survey…consumers were shown a Listerine bottle with…the shoulder label. They were asked essentially the same questions as were asked in the first survey. Some 45% of the consumers took away the message that Listerine could be used instead of floss…

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In the third survey, a control survey, consumers were asked their “pre-existing beliefs” regarding Listerine and floss; the intent was to determine the number of people who did not recall seeing [Defendant’s] commercials but who still believed that Listerine could be used instead of floss. A minority of those surveyed did not recall seeing [the allegedly false or misleading advertisement], and of those 19% stated the opinion that Listerine could be used in place of floss…

The surveyors then took the three surveys together, subtracted the 19% figure from the 50% and 45% figures, respectively, and concluded that 31% of those who saw the commercial and 26% of those who viewed the shoulder label took away a replacement message…

[Defendant] commissioned its own survey, which was conducted…in shopping malls in twelve markets throughout the United States…

… n21…[Defendant’s expert’s] testimony is rejected. First, [the control advertisement] was not a good control…it implied that Listerine is a good substitute if one does not have time to floss, a similar message to that sent by [the allegedly false or misleading advertisement]. Second, [Defendant’s expert] did not ask consumers what message they believed the commercials were conveying; instead, he asked them what their beliefs were…Third, the survey was poorly designed. Consumers were asked questions about Listerine and flossing…before they were shown the commercial and then they were asked the questions again. Hence, although [Defendant’s expert] acknowledged that it was important not to “clue” respondents in on the subject matter of the test before showing them a commercial, here the consumers were given an idea of what to look for in the commercials before they saw them…

American Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387, 393-394 (8th Cir. 2004)

…In its survey, [Defendant] asked consumers if the phrase “America's Favorite Pasta” conveyed a meaning. According to [Defendant], thirty-three percent of those surveyed allegedly perceived the phrase “America's Favorite Pasta” to mean [Plaintiff’s] is the number one brand. Fifty percent of those surveyed allegedly perceived the phrase “America's Favorite Pasta” to mean [Plaintiff’s] is a national brand. The Seventh Circuit confronted a similar question in Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir [2000])…Having concluded the phrase “1st Choice of Doctors” conveyed more doctors prefer this product over its rivals, the Seventh Circuit considered whether a consumer survey can assign a different meaning to a phrase…Mead Johnson’s survey indicated consumers perceived the phrase “1st Choice of Doctors” to mean a majority of doctors. Concluding the district court erred in using the survey to assign such a meaning, the Seventh Circuit noted, “never before has survey research been used to determine the meaning of words, or to set the standard to which objectively verifiable claims must be held.”…While acknowledging dictionaries are surveys by people who devote their entire lives to discovering the usage of words, the

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Seventh Circuit cogitated “it would be a bad idea to replace the work of these professionals with the first impressions of people on the street.”…

We agree with the Seventh Circuit. To allow a consumer survey to determine a claim's benchmark would subject any advertisement or promotional statement to numerous variables, often unpredictable, and would introduce even more uncertainty into the market place…

Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292 F. Supp. 2d 594, 604 n.5, 605 n.8 (D. N.J. 2003)

n5 [Plaintiff’s expert]…testified that he did not have access to any other commercials comparing NicoDerm to another product, so he could not have used one [a comparative commercial as a control] even if he had thought it appropriate…The Court disregards this excuse. [Defendant’s expert] testified that experts conducting consumer surveys often create new ads or alter existing ones…If [Plaintiff] wishes the Court to credit its survey evidence, that evidence must conform to generally accepted survey principles. Nothing prevented [Plaintiff] from designing its own mock comparative commercial for the purposes of [its] Survey.

… n8 [Plaintiff] attempts to salvage the [Plaintiff’s expert’s] Survey by

claiming that [Plaintiff’s expert’s] control question is a sufficient safeguard against any “noise.”…As noted supra, however, the control question only weeds out the "yea-sayers." It does not protect the survey from the bias brought by consumers' pre-existing beliefs about comparative commercials.

Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 379 (S.D.N.Y. 2003)

…When an advertisement is not literally false, but rather is ambiguous or implicitly false, a plaintiff can only establish a claim of false advertising through a survey…[Plaintiff] fails to present this Court with any survey…Accordingly, defendant’s motion for summary judgment on [Plaintiff’s] false advertising claim is granted.

The Scotts Co. v. United Industries Corp., 315 F.3d 264, 276-281 (4th Cir. 2002)

To show consumer confusion, [Plaintiff] presented evidence of two focus group[s]…and the results of a survey of forty consumers…

… We note that the very nature of a focus group seems, to some extent, to

limit its ability to identify the message an advertisement conveys to an individual consumer. As the Defendants’ expert explained, focus groups “are a form of brainstorming where the participants are encouraged to ‘build on’ the thoughts of others.”…Thus, a participant who may have derived no false message from an advertisement viewed outside the context of the focus group might well change his opinion about the message conveyed by the advertisement after considering

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the views expressed by the other participants…we agree with the Defendants that, in this case, the focus group evidence was unreliable and cannot be considered probative on the question of whether the [Defendants’] packaging was likely to mislead consumers.

… We…conclude that the manner in which the focus groups were conducted

destroyed the objectivity of the discussions, rendering the results utterly unreliable on the question of whether the…packaging conveys a false message…the deficiencies in the focus group evidence are so substantial that we are constrained to conclude that the district court abused its discretion by giving the evidence any weight…

…[Plaintiff’s other] evidence of consumer confusion comes from its survey of 40 do-it-yourself lawn care consumers…

As previously discussed, the express messages conveyed by the …packaging are literally true. Vigoro prevents crabgrass if it is applied up to four weeks after the crabgrass has emerged from the soil… By preventing crabgrass from even starting, Vigoro does prevent mature crabgrass. The critical question in this case, then, is whether the…packaging conveys the message that Vigoro kills mature crabgrass, a message that would be false. The survey, however, simply did not address that question.

The interviewer showed the respondents an empty Vigoro bag folded in quarters so that the lower left quadrant…was visible and asked: “Based on your review of this section of the bag, should this product prevent the growth of crabgrass that looks like the crabgrass pictured?”…Through the use of the word “prevent,” this question suffers from the same ambiguity as does the Vigoro packaging itself. That is, we cannot tell from this question whether the respondents who answered yes believed that Vigoro could prevent mature crabgrass by stopping it before it started, or whether they believed that Vigoro could kill if applied to established, mature crabgrass.

… Moreover, the manner in which the survey was conducted creates

significant questions about its relevance and reliability. The purpose of consumer surveys in false advertising cases is to determine the message actually conveyed to consumers. But the interviewers conducted the survey in this case in a way that effectively required the respondents to express a specific opinion, even if they did not have an opinion, by specifically not offering the respondents the opportunity to give “not sure” as a response…In addition, the survey respondents were given an empty Vigoro bag folded into quarters so that only the quadrant with the crabgrass illustration was visible, thus obscuring the parts of the Vigoro packaging that emphasized its focus on stopping crabgrass before it started, and the respondents were asked to review only that portion of the bag. The survey thus elicited information about the consumer’s reaction to an isolated part of the packaging, when the relevant issue in a false advertising case is the consumer’s reaction to the advertisement as a whole and in context. We believe that these deficiencies in the survey’s design, particularly when considered in light of the survey’s failure to focus on the critical question, weaken the relevance and

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credibility of the survey evidence to the point that it sheds no light on the critical question in this case…

… …We therefore conclude that the district court abused its discretion by

crediting the survey evidence.

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 290 F.3d 578, 590-591 & n.7, 593-594 & nn.12-13 (3d Cir. 2002)

The District Court gave significant weight to the results of [Plaintiff’s] consumer survey…The [Plaintiff’s] survey was conducted in what is called a “double blind” fashion during which both the respondents and the interviewers are unaware of the purpose of the survey or its sponsor…432 respondents were split into two groups known as “cells.” The first cell was asked to focus on the [Mylanta Night Time Strength] product line as it would likely appear in retail stores. The second cell served as a control group that was asked to focus on the Mylanta Extra Strength product. In the [Mylanta Night Time Strength] cell, approximately 30% of the respondents expressed their belief that [Mylanta Night Time Strength] provided relief that lasted the whole night. By contrast, less than 5% of the respondents in the control cell believed that Mylanta Extra Strength provides relief that lasts all night. After netting out this “noise,”…[n.7 The responses of the control cell are called “noise.” They represent the percentage of people that would have found a message of “all-night relief” irrespective of the labeling claim.] the survey results indicated that a total of 25% of respondents received a message that the [Mylanta Night Time Strength] product provides all-night relief.

The District Court accepted this 25% figure as sufficient proof that the [Mylanta Night Time Strength] product name “deceives a substantial portion of the intended audience.”…

… …[Defendant] disputes the District Court’s use of its results…

… …it is fair to conclude that at least 15% of the total number of

respondents…derived a message of all-night relief from the product name… Assuming arguendo that only 15% of respondents received a message of

all-night relief from the [Mylanta Night Time Strength] name, we need not vacate the injunction. Relying upon Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d 312, 317 (2d Cir. 1982), the District Court observed that even a 15.5% figure would be sufficient to demonstrate a likelihood of substantial consumer confusion…[n.12 Although the 15.5 figure that the District Court considered was proferred by J&J under a different rationale than the one used on appeal, the District Court did find that 15.5 would be sufficient to support a finding of substantial consumer confusion. 129 F. Supp. 2d at 367.]…In Coca-Cola the consumer survey evidence demonstrated only 7.5% consumer deception. Coca-Cola Co. v. Tropicana Prods., Inc., 538 F. Supp. 1091, 1096 (S.D.N.Y.), rev’d, 690 F.2d 312 (2d Cir. 1982). There, the District Court denied the injunction

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sought by the plaintiff because, inter alia, “a level of consumer confusion significantly below 15% does not indicate plaintiff’s probable success on the merits.” …On appeal, the Second Circuit reversed, finding that “a significant number of consumers would be likely to be misled.” Coca-Cola, 690 F.2d at 317...[n.13 Although the Second Circuit’s holding was made before Federal Rule of Civil Procedure 52(a) was amended to provide that a district court’s findings of fact cannot be set aside unless clearly erroneous, its holding nevertheless supports the view that a 7.5 figure could sustain a finding of substantial consumer confusion.]

In an analogous context involving trademark cases under the Lanham Act, courts have held that survey evidence of 15% confusion is sufficient to demonstrate actual confusion. See Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 466-67 & n.15 (4th Cir. 1996) (15-20% confusion was sufficient to establish “actual confusion . . . to a significant degree”); Goya Foods, Inc. v. Condal Distribs., Inc., 732 F. Supp. 453, 457 n.7 (S.D.N.Y. 1990) (9-10% confusion was sufficient to demonstrate “meaningful evidence of actual confusion”). Likewise we believe that survey evidence demonstrating that 15% of the respondents were misled by the [Mylanta Night Time Strength] name is sufficient to establish the “actual deception or at least a tendency to deceive a substantial portion of the intended audience,” Rorer, 19 F.3d at 129…

Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22470, *72 & n.200 (W.D. Tex. 2001)

At best [Plaintiff’s] survey shows the “likelihood” of deception, as…stated in its summary judgment response. The [survey respondents] were not asked about the message they perceived from the advertisements or what they thought the message meant…[n.200 See Johnson & Johnson-Merck Consumer Pharmaceutical Co. v. Rhone-Poulenc Rorer Pharmaceuticals, Inc., 19 F.3d 125, 134-36 (3d Cir. 1994) (affirming and discussing district court’s findings that “well-designed consumer survey first asks ‘communication’ questions to see what messages the viewer got…In the next step, the survey asks those who received a particular message… questions to determine what the viewers thought the message meant.”)] The physicians who participated in the survey were not even asked to view the advertisements or any questions about their understanding of the term “generic.” Therefore, [Plaintiff] has not established that a substantial number of [physicians] were actually deceived by the advertisements…

SmithKline Beecham Consumer Healthcare, L.P. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 2001 U.S. Dist. LEXIS 7061, *24-*25 & n.14, *35, *37-*38 (S.D.N.Y. 2001)

While it is certainly true that courts considering Lanham Act challenges base literal falsity determinations upon the explicit claims made by an advertisement, courts may also consider any claims the advertisement conveys by “necessary implication” through visual images or visual images combined with an

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audio message…[n.14 The doctrine of “necessary implication” involves a finding that a claim, as communicated by the visual and verbal representations of the advertisement, is literally false. In such cases, no reference need be made to consumer reaction and thus is distinct from a finding of implied falsity, where the claim is literally true but deemed misleading.]…see also Gillette Co. v. Wilkinson Sword, Inc., 1989 U.S. Dist. LEXIS 8276, 1989 WL 82453 (S.D.N.Y. 1989) (holding that consumer survey evidence is not required when the allegedly false claim is a “necessary implication” of the explicit language in the advertisement)…

… In considering a claim of implied falsity, a district judge cannot determine whether the advertisement is deceptive based “solely upon his or her own intuitive reaction.”…Thus, the success of a party’s implied falsity claim usually turns on the persuasiveness of a consumer survey…

… The consumer survey presented by [Defendant] purporting to gauge the misleading message conveyed to consumers, suffers from a fatal flaw as to the first factor, in that there were no controls in place to assure the accuracy of the results. A control is a way of measuring and rooting out whatever error potential, or “noise” exists, that is, something other than what is being measured in the first place…

… [Defendant’s expert’s] testimony that a control was simply impractical in this context does not function to alleviate concerns regarding the survey’s methodology…

JTH Tax, Inc. v. H&R Block Eastern Tax Services, Inc, 128 F. Supp. 2d 926, 939 & n.8 (E.D. Va. 2001)

Although consumer survey evidence is not required to establish materiality, probative evidence must support a trier of fact’s determination of materiality...

n.8 Defendants [argue]…that proof of the materiality element requires survey evidence…Deception and materiality are two distinct analyses: (1) whether a false advertisement is deceptive (actually or tending to), which analysis requires survey evidence and (2) whether the deception is material, which analysis requires probative, but not necessarily survey, evidence…

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351, 364-367 (D. N.J. 2000)

A well-designed consumer survey first asks “communication” questions to see what messages the viewer got and to “filter” or separate those viewers who received certain messages from those who did not. In the next step, the survey asks those who received a particular message, ... “comprehension” questions to determine what the viewers thought the message meant…

…

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…[Defendant] first criticizes the survey as containing questions that are result driven, leading or suggestive…

…None of the questions posed…are leading because they do not suggest an answer...

Additionally, bias…was eliminated by use of the control group… [Defendant] further believes that…survey is flawed because products were

left in front of the respondent for the entire interview. [Defendant] asserts that such a technique fails “to simulate with any remote realism how consumers actually” behave and turns the survey into “more [of] an open book test than a measure of realistic consumer reaction.”…the Court finds that leaving the products for the respondents to examine rather than taking the products away replicates market conditions.

… …[Defendant] concludes that the net percentage of consumers who received an all night message from the label was only 15.5%, which J & J claims is an insufficient number for a finding of implied falsity.

… Even assuming that [Defendant] is correct that only 15.5% of the respondents were misled, that percentage is sufficient to show that, under the Lanham Act, the “Night Time Strength” name tends to deceive or mislead a substantial portion of the intended audience.

Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116, 131-132 (2d Cir. 2000)

Second, to establish the likelihood of commercial injury for the purposes of standing, [Plaintiff] argues that [Defendant’s] use of the “Havana Club” name will adversely affect [Plaintiff’s] current and future sales of its rum to U.S. visitors to Cuba. The fact that [Plaintiff] sells to Americans traveling in Cuba, however, does not necessarily demonstrate the likelihood that the distribution of [Defendant’s] “Havana Club” rum in the United States will hurt [Plaintiff’s] sales to those persons in Cuba. Although [Plaintiff] presented consumer surveys that reported that “33% of Americans think that it is legal to sell rum from Cuba in the United States and 9% do not know whether it is legal or illegal,” the District Court noted that “it is intuitively doubtful that these finding[s] would apply to U.S. travelers authorized to visit Cuba.” Havana Club Holding IV, 62 F.Supp.2d at 1100 n. 11…A district court has broad discretion concerning the weight of particular evidence, including consumer surveys…see Schering v. Pfizer, Inc., 189 F.3d 218, 230 (2d Cir. 1999); Grotrian, Helfferich, Schulz, Th. Steinweg Nachf. v. Steinway & Sons, 523 F.2d 1331, 1341 (2d Cir. 1975)…In this case, the plaintiffs’ consumer surveys drew their sample from across the United States, without attempting to control for any likelihood that the participants would travel to Cuba. Under such circumstances, the District Court’s finding that these surveys did not show consumer confusion among the relevant class of travelers was not clearly erroneous.

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Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883, 884-886 (7th Cir. 2000) …[Plaintiff] commissioned a survey…

… …of consumers about their understanding of the phrase “1st Choice of

Doctors.” It is a problematic exercise, for the survey assumes that “first” is a cardinal number--that is, a count such as “246” or “55” or a ratio of two such numbers, rather than a place in a series...

There is a deeper problem: the use of a survey in the first place. Surveys are accepted ways to probe for things such as confusion about the source of goods, for confusion depends on the effect of a phrase or trade dress on the consumer…So far as we can tell, however, never before has survey research been used to determine the meaning of words, or to set the standard to which objectively verifiable claims must be held. Dictionaries themselves are a form of survey; lexicographers determine how words have been used in both scholarly and popular texts. But philologists and others who contribute to dictionaries devote their lives to discovering usage and interpreting nuance. It would be a bad idea to replace the work of these professionals with the first impressions of people on the street, especially because consumers’ sketchy understanding of science means that survey results are apt to present firms with unrealistic demands for verification.

Mead Johnson & Co. v. Abbott Laboratories, 41 F. Supp. 2d 879, 888 n.4 (S.D. Ind. 1999)

FN4. Federal courts have not established a numerical benchmark for determining when a claim is misleading for purposes of the Lanham Act. Circuit courts have written in terms of deceiving “a substantial portion of the intended audience,”...and deceiving “a not insubstantial number of consumers.”... (“deceived a significant portion of the recipients”)...(requiring plaintiff to demonstrate that “a statistically significant part of the commercial audience holds the false belief allegedly communicated by the challenged advertisement”)... (tendency to deceive 7.5% of consumers was not sufficient to prove deception). District courts have found a tendency to deceive where surveys indicated that a substantial minority of consumers was likely to be misled...(potential that between 22% and 57% of consumers will be misled is not insubstantial)...(deception rate of between 23% and 33% sufficient to warrant preliminary injunctive relief)...(23% not insubstantial number of consumers)...In this case, the tendency to deceive more than 40 percent of consumers is substantial…

Miramax Films Corp. v. Columbia Pictures Entm’t Inc., 996 F. Supp. 294, 299 (S.D.N.Y. 1998)

The survey involved two studies. The first...is a study of consumers who saw “Summer” during its opening weekend...The second...is a study of consumers

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standing in line waiting to view “Summer”...Both surveys were directed to fifteen to forty year olds in the top 180 motion picture markets of the United States.” ...17% of [the consumers in the first study and]...

...20% of [the consumers in the second study] thought that the advertising for “Summer” communicated that “Summer” was “the sequel to ‘Scream,’” that the creator of “Summer” produced “Scream,” that the creator of “Summer” directed “Scream,” or that the creator of “Summer” was Wes Craven...

... Plaintiff is likely to succeed on its claim that the “Scream” catchphrases are misleading and are likely to mislead potential viewers of horror films to believe that “Summer” comes from the same source as “Scream.” First, plaintiff has shown that an appreciable number of consumers hold false beliefs as to the connection between the two films...

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FAME and DILUTION SURVEYS Visa Int’l Service Ass’n v. JSL Corp., 610 F.3d 1088, 1091 (9th Cir. 2010)

[Defendant] vigorously contests the validity of market surveys and expert testimony introduced by [Plaintiff] to show that eVisa dilutes the [Plaintiff’s] mark, and it claims that evidence should have been excluded under Daubert v. Merrell Dow Pharms., Inc...But a plaintiff seeking to establish a likelihood of dilution is not required to go to the expense of producing expert testimony or market surveys; it may rely entirely on the characteristics of the marks at issue. See 15 U.S.C. § 1125(c)(2)(B) (listing relevant factors). Expert testimony and survey evidence may be necessary in marginal cases, or where a defendant introduces significant evidence to show that dilution is unlikely. But [Defendant] presented nothing, other than [the operator’s] statement that he did not intend to dilute the [Plaintiff’s] mark, to rebut the inference of likely dilution created by the strength and similarity of the marks. Good intentions alone do not negate a showing of a likelihood of dilution. We therefore need not reach the admissibility of [Plaintiff’s] expert testimony and market survey evidence.

Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225, *28-*30, *34-*38, *40-*41 (T.T.A.B. 2010) This opinion is a precedent of the T.T.A.B.

As part of its regular monitoring of its demand enhancement activities, as well as to comply with its obligation to report on such activities to the Agricultural Marketing Service of the USDA, opposers have since 1987 conducted semi-annual tracking surveys through independent research firms...These tracking study results have been critical to the planning of opposers’ annual advertising and promotional strategies and other business activities...In response to the admittedly leading question “Have you read, seen or heard pork referred to as ‘THE OTHER WHITE MEAT?’,” these tracking studies have consistently shown public awareness of the mark THE OTHER WHITE MEAT at or above eighty-five percent of consumers nationwide... In a separate study in the year 2000 (“the Northwestern Study”), conducted under the auspices of the School of Integrated Marketing & Communications at Northwestern University...researchers found that the mark THE OTHER WHITE MARK [sic] was the fifth most recognized advertising slogan in America among the general adult population at that time.

... ...In assessing the proper evidentiary weight to be accorded to this evidence and testimony, we find the results to be probative of the public perceptions, and hence the renown, of opposers’ claimed slogan.

...

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After playing a recording of applicant’s slogan, the screener asked the respondents the following questions:

(4) “Thinking about the slogan you just heard [THE OTHER RED MEAT], do any other advertising slogans or phrases come to mind?” [If answered “yes” continue to Q5]

(5) “What other advertising slogan or phrase comes to mind?...

Applicant charges that Question 4 is inappropriate “because it improperly suggests to survey respondents that another slogan or phrase exists that should be brought to mind” upon hearing applicant’s slogan. However, the survey was intended to test the precise question of whether applicant’s mark calls to mind opposers’ mark or advertising campaigns. Accordingly, it seems that it was necessary to pose the question of whether this slogan brought to mind any other advertising slogans. We do not find this to [be] an inappropriately leading question. An affirmative answer of another slogan is not presumed with the phrasing of “... do any other advertising slogans ...” come to mind... As to the follow-on query contained in survey Question 5, applicant argues that intentional trickery was involved here. According to applicant, by asking respondents to identify some “other advertising slogan” that may come to mind, [Opposers’ expert] intended to introduce a critical word-association. By instructing the survey interviewers to stress the word “other” in “other advertising slogan,” applicant argues that screeners allegedly induced the response “The Other White Meat.” In this context, it is difficult to avoid this word, coincidentally contained in both parties' marks...Furthermore, although Professor McCarthy may question the relevance of a “call to mind” question as it relates to issues of actual confusion or likelihood of confusion, the phraseology of this question is clearly relevant to the issue of likelihood of dilution...

... Applicant’s criticism of opposers’ use of “The Tasty Main Dish” as an allegedly inappropriate control slogan, like other of applicant’s complaints about the [opposers’ expert’s] survey, comes without a convincing explanation about what is inherently wrong with this particular phrase. If the proof is in the pudding, opposers’ survey results demonstrate that this control phrase did exactly what it was designed to do, namely, to assess the level of any guessing (or “noise”) on the part of respondents that could affect the reliability of the critical results of the survey.

... ...we overrule applicant’s objections to [opposers’ expert’s] testimony and...dilution survey prepared for this litigation. We find [opposers’ expert’s] testimony to be reliable and persuasive, and the results of the survey to be probative on the issue of likelihood of dilution.

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Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 109 (2d Cir. 2009)

The District Court also determined that there was not an “actual association” favoring Starbucks in the dilution analysis. Starbucks, however, submitted the results of a telephone survey where 3.1% of 600 consumers responded that Starbucks was the possible source of Charbucks. The survey also showed that 30.5% of consumers responded “Starbucks” to the question: “[w]hat is the first thing that comes to mind when you hear the name ‘Charbucks.’” In rejecting Starbucks’ claim of actual association, the District Court referred to evidence supporting the absence of “actual confusion” to conclude that “the evidence is insufficient to make the…factor weigh in [Starbucks’] favor to any significant degree.”…This was error, as the absence of actual or even of a likelihood of confusion does not undermine evidence of trademark dilution…

Google Inc. v. Nikolaus Gubernator, 2009 T.T.A.B. LEXIS 81, *9-*10, *16-*17 & n.8 (T.T.A.B. 2009) This opinion is not a precedent of the T.T.A.B.

The record is rife with other evidence of [Plaintiff’s] fame…Opposer also presented an expert witness…who testified that he conducted a survey on behalf of opposer for an unrelated litigation in 2003…In the telephonic survey of respondents who indicated “they used the Internet,” 53.47% identified Google as a search engine without prompting, more than double the next most recognized brand…[Opposer’s expert] concluded that “the Google mark both is famous and was famous as early as March of 2003.”… We conclude that opposer has shown significant market exposure, revenue, and overall fame amongst the relevant public. The evidence clearly establishes that GOOGLE is a famous mark in connection with search engine services…

… Opposer has established that its mark is famous as well as fanciful, both of which weigh heavily in its favor. Furthermore, we find that the marks are similar, and the services overlap. Accordingly, we find a likelihood of confusion between opposer’s GOOGLE mark for the search engine and related services as pleaded, and applicant’s mark CHMOOGLE for “consultation services in the field of scientific research.” [n.8 Since we find a likelihood of confusion, we need not consider opposer’s claim of dilution.]

Visa Int’l Service Ass’n v. JSL Corp., 590 F. Supp. 2d 1306, 1315 (D. Nev. 2008)

The third factor is “[t]he extent of actual recognition of the mark.”…A survey authored by Plaintiff’s expert…found that 99 percent of

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respondents, who were taken from a sample encompassing the entire United States, were aware of the VISA brand of payment cards…[Plaintiff’s expert] also found that 85 percent of respondents identified VISA when asked, “Now, please tell me which brands of payment cards can be used to buy goods and services at more than one type of merchant. These include credit cards, charge cards, debit or ATM cards and prepaid cards. Which payment card brand names can you think of?”…Therefore, the third factor weighs heavily in favor of a finding of fame.

The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657, 675 & n.14, 676 & n.15 (W.D. Tex. 2008)

[Defendant’s] primary argument goes to the third issue, the actual recognition of the mark, and contends that [Plaintiff’s] mark is not sufficiently recognized on a national level to be famous. They base this argument on their expert…who conducted a national survey he contends demonstrates that only 5.8% of respondents in the United States “associated the UT registered longhorn logo with UT alone” and that “only 21.1% of respondents in Texas associated the UT registered longhorn logo with UT alone.”…As an initial matter, it simply does not matter, for purposes of a federal dilution cause of action, what the results are of a survey conducted of people in the Austin metropolitan area or the State of Texas. As noted above, the TDRA specifically requires that the mark be “widely recognized by the general consuming public of the United States.”… …[Defendant’s expert] conducted his survey using a test group and a control group…For the test group he used the UT LSL that is registered with the Federal Register (however he showed it to participants in white with a white background, rather than the burnt orange color it almost invariably appears in, or against). For the control group he used the longhorn or “the cow's head” from the Longhorn World Championship Rodeo logo…[n.14 Note that in his survey [Defendant’s expert] only used the longhorn portion of this graphic (i.e., not the entire logo.)] [Defendant’s expert] contends that he used this alternative longhorn depiction because “[r]espondents who associate the ‘control’ symbol with UT are either guessing or indicating that any depiction of a longhorn steer will be associated with UT.”… …The evidence shows that [Defendant’s expert] did not test the LSL in the burnt orange color in which it almost invariably appears (apparently survey respondents were shown a “whited out” version of the LSL)…When confronted with this fact -- that the mark he was ostensibly attempting to test was not being shown to the general consuming public in the manner in which they would be exposed to in the marketplace – [Defendant’s expert] stated UT’s mark, the LSL, is used in a wide variety of contexts, and picking any one of them would be to bias the results…It

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is difficult to understand how it would bias the results to show the general consuming public the mark in the typical circumstance in which the public would confront that mark in the marketplace, rather than showing them it in a manner in which they would likely not confront it. [n.15 The Court’s view is supported by the leading treatise. In a slightly different context – likelihood of confusion – McCarthy notes that while survey evidence “is sometimes said to be evidence of ‘actual’ confusion, it is so only to the extent that the survey mirrors the real world setting which can create an instance of actual confusion.”…The same overarching principle applies to a the [sic] dilution cause of action. See 15 U.S.C. § 1125 ©(2)(A) (the TDRA specially requires that the mark be “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner”; see also adidas America, [529 F. Supp. 2d 1215 @ 1244.])

Visa Int’l Service Ass’n v. JSL Corp., 533 F. Supp. 2d 1089, 1097 (D. Nev. 2007)

The sixth consideration in determining whether the VISA mark is famous is the degree of recognition of the mark in the trading areas and channels of trade used by the owner of the mark and the person against whom the injunction is sought. A survey authored by Plaintiff’s expert…found that 99% of respondents, who were sampled from households with telephones in the United States, were aware of the VISA brand of payment cards…[Plaintiff’s expert] also found that 85% of respondents identified VISA when asked what kinds of payment cards they could think of…Accordingly, this factor weighs greatly in favor of a finding that the VISA mark is famous.

adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215, 1245 n. 11 (D. Or. 2007)

n.11 Given the extensive evidence [Plaintiff] submitted as to each of the statutory “fame” factors, its failure to conduct a fame survey is not dispositive…

Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 569 (S.D.N.Y. 2007)

…Moreover, with respect to the trademark dilution component of the [Plaintiff’s] Survey, the Special Masters [Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2007 U.S. Dist. LEXIS 92167, *62-*66 (S.D.N.Y. 2007)] found that [Plaintiff’s expert’s] analysis was plagued by the same methodological flaws present in the confusion component, and also “proceeds from a fundamental misunderstanding of the theory of dilution by blurring,”…improperly conflating it with consumer confusion…

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Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 66686, *12-*13 (E.D. Cal. 2007)

…[Plaintiff] retained [an expert] to design a survey to measure, inter alia, the likelihood of dilution of the NIKE brand as a result of [Defendant’s] use of the NIKEPAL mark… In designing his study, [Plaintiff’s expert] used a universe of survey participants randomly selected from lists of companies that [Defendant’s] deposition testimony identified as the sources for Nikepal’s current and prospective customers…[Plaintiff’s expert] conducted the survey by phone and asked respondents about their perception of a website called nikepal.com… Once survey respondents were screened to confirm that they were the persons most responsible for ordering laboratory equipment at their business, they were asked: “What if anything, came to your mind when I first said the word Nikepal?” Many survey respondents… identified Nike. [Plaintiff’s expert] testified that his survey revealed that the vast majority of respondents, 87%, associated Nikepal with Nike; that is, when they encounter the mark NIKEPAL, they think of Nike and/or its offerings…

Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966,*10, *13, *14 (E.D. Cal. 2007) (Dilution)

In support of its motion, Plaintiff submitted…survey evidence…that allegedly indicates that a substantial majority of laboratory equipment purchasers think of NIKE when encountered with Defendant’s website, “nikepal.com.”…Plaintiff contends that the survey supports certain factors relevant to the dilution claim, specifically that NIKE is a highly recognized mark and that there is an actual association between Plaintiff and Defendant’s mark…

Defendant contends that the survey is “fatally flawed” because it was only directed to Defendant’s website which is not “a service mark which is in issue in this action” and because it was administered by telephone and thus “the survey could NOT possibly present Defendant’s service mark in the context in which Defendant uses its [m]ark.”…

… Defendant’s contention that the survey is limited to Defendant’s

website name and conducted only by telephone may diminish its weight, but it does not indicate [that Plaintiff’s] survey is “so badly flawed that it cannot be used to demonstrate the existence of a question of fact on the [dilution claim].”…Further, Defendant’s assertion that the survey is flawed because, among other reasons, the “survey was not directed to the general consuming public of the United States” has not been supported by authority. The survey targeted laboratory research professionals which included a targeted sample of Defendant’s customer base and potential

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consumers that [Plaintiff’s expert] asserts Defendant “describes as its target industries.”…“‘To be probative and meaningful . . . surveys . . . must rely upon responses by potential consumers of the products in question.’”…Similarly, although Defendant argues that only a “small number of persons were surveyed[,]” Defendant does not point to any authority suggesting that a survey of 301 laboratory research professionals is fatally flawed.

Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481, *10-*13 (D. Or. 2006)

[Plaintiff’s expert] also conducted a survey to estimate the actual dilution of the MO’s mark resulting from the entry of Moe’s Southwest Grill. Surveyors telephoned 472 Oregon and Vancouver, Washington consumers and asked if they had heard of several restaurants: Mo’s, Sizzler, Arby’s, Baja Fresh, McCormick & Schmick’s, Olive Garden, and two control phantom names, Mary’s and Gary’s. Additional questions were asked about Mo’s and Olive Garden if the consumer indicated they knew about them.

[Plaintiff’s expert] concluded: (1) 60.75 % of the consumers had heard about Mo’s; (2) 30% of the consumers in Wilsonville have come to associate Mo’s with the types of food sold by Moe’s, namely Mexican/Southwestern food; and (3) consumers in the control towns of Beaverton, Clackamas, and Gresham were 16% more likely than consumers in Wilsonville to identify Mo’s with seafood.

… [Defendant’s expert] concludes that there are reasons why [Plaintiff’s expert’s] net estimate of fame/awareness for Mo’s, 60.75 %, is inflated. The telephone context precludes the consumer from seeing the spelling of Mo’s. Combined with the fact that there are many third-parties that use Mo’s or Moe’s as part of their business names, and that three of these are restaurants in the Portland metropolitan area, a consumer indicating that he had heard of “Mo’s” could have been referring to any of these businesses because there were not adequate follow-up questions to identify the specific restaurant the consumer knew. Recalculating [Plaintiff’s expert’s] raw data, [Defendant’s expert] reaches a net fame estimate of 49.35%, at most.

CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588, *27-*28 (4th Cir. 2006)

[Plaintiff’s] second argument - that the [Plaintiff’s] survey provides evidence of actual dilution - is no more convincing. As noted above, the [Plaintiff’s] survey was designed to measure likelihood of confusion, not dilution…Thus, the survey at best measured whether consumers believe that [Defendant] is associated with [Plaintiff], not whether [Defendant’s] mark has

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“reduced the capacity of the [Plaintiff’s] mark to identify the [services] of its owner.” …The survey’s results provide no forecast of actual dilution…

Accordingly, the district court did not err in granting [Defendant] summary judgment on [Plaintiff’s] dilution claim.

Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578, *26-*30 (S.D.N.Y. 2005)

Here there is no showing of actual dilution of Plaintiff’s Starbucks Marks as a unique identifier of its goods. Although Plaintiff’s survey results indicate that 39.5% of people associate the term “Charbucks” with “Starbucks” or coffee…there is no indication that that is attributable to any usage of that term by Defendant, or that such usage affects the ability of the Starbucks Marks to serve as a unique identifier of Plaintiff’s products…

Nor is there sufficient evidence of dilution by tarnishment to warrant the grant of injunctive relief. Plaintiff again relies on the survey results in this connection. Although the Plaintiff’s summary of the survey results indicates that 43.3% of the respondents, when queried as to whether they “would…have a positive impression or negative impression of a coffee called ‘Charbucks,’” indicated that they would have a “negative” impression of such a coffee…the reported responses to the open-ended query that preceded the positive/negative question -- “If the name ‘Charbucks’ were used for a type of coffee, how would you describe the coffee?” -- are much less indicative of any potential for tarnishment. There, only 6.3% of the respondents provided what was characterized as “generally negative” response to the query, 15.2% described such a hypothetical coffee as “charred,” “burnt,” “bitter” or “smokey” (at least five of those providing this description are reported to have made a “positive” response to the negative/positive impression question…and 34.9% of the respondents described the hypothetical flavor as “strong,” “dark,” “black” or “rich-flavored” coffee…Many of those describing the taste as strong or rich are also reported to have made “positive” responses to the two-pronged question that followed…Plaintiff also proffers its expert’s conclusory assertion that negative perceptions of “Charbucks” would have a negative impact on Starbucks’ brand name recognition…However, that opinion carries little weight in light of the paucity of evidence of such negative impressions and linkage.

Accordingly, Plaintiff has failed to demonstrate that Defendant’s use of the term “Charbucks” as part of the name of one of its lines of coffee has tarnished Starbucks’ reputation, or is likely to lead the public to associate a lack of quality or prestige of Defendant’s product with Plaintiff’s good. Plaintiff has failed to sustain its burden of proof under the FTDA and New York antidilution statute.

Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660, *20-*22 (D. Or. 2005)

…Oregon’s dilution statute requires only that a plaintiff prove a “likelihood” of dilution…This burden is met by evidence that the defendant used

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a variant mark that “has created some mental association between the protected mark and the alleged diluter.”… …Dilution can occur in two distinct manners: by “blurring” or “tarnishment.” Dilution by “blurring” occurs when the defendant’s use of a variant of the plaintiff’s mark creates “at least some subliminal connection in a buyer’s mind between the two parties’ use of their marks.”…Blurring is actionable even before the defendant’s use becomes widespread and before the mark suffers significant injury. …“Tarnishment” of a trademark occurs when the defendant creates an association in the minds of consumers that is inconsistent with the pre-existing reputation of the plaintiff’s mark.

…[Plaintiff’s expert’s] testimony and survey provided direct evidence that [Defendant’s] use of the name “Sambuck’s” creates a likelihood of both types of dilution. [Plaintiff’s expert’s] consumer survey establishes, among other things, that: (1) Eighty-five percent of respondents shown the “Sambuck’s Coffeehouse” name immediately thought of “Starbucks” (twice the percentage of persons who were shown the placebo name, “Sammy’s Coffeehouse”); (2) over seventy percent of respondents who were shown the “Sambuck’s Coffeehouse” name indicated that the name brought Starbucks to mind because of the high degree of similarity between the two terms; and (3) no respondent who saw only the “Sammy’s Coffeehouse” name indicated that they thought of “Starbucks” because of similarities between the marks.

… …[Defendant’s] use of the “Sambuck’s” mark is likely to dilute the distinctive quality of the Starbucks mark…

Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766, 779 (S.D. Tex. 2005)

…Defendants have produced evidence that a significant percentage of consumers surveyed believed that a beer called “Starbock” or “Star Bock” was put out by, affiliated or connected with, or approved or sponsored by Defendants. This evidence goes beyond a mere mental association. It shows that Plaintiff's mark lessens Defendants’ ability “to identify and distinguish goods and services.”…

…Therefore, Plaintiff’s use of “Star Bock” and “Starbock” does dilute Defendants’ marks under federal law…

Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 390 F.3d 158, 167-168 (2d Cir. 2004)

Plaintiff’s federal dilution claim fails also because no evidence of actual dilution exists…This does not mean that a plaintiff must show the actual consequences of dilution, such as lost profits…Plaintiffs may rely on consumer surveys and other circumstantial evidence. Here…plaintiffs…rely heavily on a survey conducted by [Plaintiff’s expert]. That survey, however, did not use any [of Defendant’s] packaging, but rather used index cards with the words “Moist-

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Ones” and “Wet Ones” placed out of context. Moreover, the index cards did not contain the words “Quilted Northern.” The survey therefore cannot be offered as evidence that the mark “Quilted Northern Moist-Ones,” as it is presented and packaged, has actually diluted the mark “Wet Ones.”…

Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295, *88-*89, *92 (S.D.N.Y. 2004)

…[Plaintiff’s expert] found that [Defendant’s] It-bags “cause dilution by blurring at [twenty-three] percent…” This finding merits little weight for several reasons. First, screening questions used in this study rely on respondents’ understanding of [an] ambiguous word…Second, the study lacks objectivity. Having failed to obtain satisfactory responses (i.e., no dilution) from his first fifty-eight respondents, [Plaintiff’s expert] terminated the original survey and started over…Third, [Plaintiff’s expert] expanded the scope of “dilution” (by blurring) under the FTDA beyond “distinctiveness,”…by asking questions relating to “desirability.”…Because desirability is unrelated to a mark’s ability to identify and distinguish [Plaintiff’s] handbags, inclusion of these questions was erroneous…

Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335, 354, 362, 380-381 (D. N.J. 2002)

…[Plaintiff] relied on a survey…to support its contention that the [Defendant’s] mark dilutes the [Plaintiff’s] mark.

… … According to [Plaintiff, Plaintiff’s] survey demonstrated a 14% dilution of the [Plaintiff’s] mark… [In Plaintiff’s] survey...ophthalmologists were shown a box [bearing Defendant’s mark] and asked what other “products,” if any, were brought to mind…

… Even fully crediting [Plaintiff’s] survey, it is insufficient on its face to

support a preliminary injunction for trademark dilution. That survey shows at best a dilution level of 14%…That is less than half of the lowest percentage of dilution in any reported decision basing a finding of dilution on a survey…Without dictating that any particular level of dilution is necessary at a minimum, it is plain that 14% is not adequate to sustain the extraordinary remedy sought here--a preliminary injunction against an FDA-approved prescription drug…

Binney & Smith and Binney & Smith Properties, Inc. v. Rose Art Industries, 2001 U.S. Dist. LEXIS 11827, *8, *9 & n.2, *10 (E.D. Pa. 2001)

The Crayola color scheme qualifies as…famous…This is evidenced by the market research surveys…[n.2 Defendant claims that Plaintiffs rely on several surveys that must be disregarded because there is no evidentiary basis for their

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admission into the record… Plaintiffs assert that their surveys were performed by an outside firm in the ordinary course of their business, none of which were conducted for the purposes of litigation. Based on these representations, the Court finds that the surveys have the Circumstantial guarantees of trustworthiness…] …The Crayola mark has acquired virtually universal recognition among consumers in this county…survey conducted for Plaintiffs found that 92% of mothers of children aged 2-12, who are the primary purchasers of children’s art products, think of the Crayola mark without prompting when asked to name a brand of crayons…The same survey found that 80% think of the Crayola mark with [and] without prompting when asked to name a brand of markers…Also, in a 1987 market research survey that asked mothers to draw a Crayola package from memory, all 450 mothers surveyed drew a green and yellow box…

Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658, 669 & n.18 (E.D. Va. 2001)

n.18…we find that the [Plaintiff’s] marks is famous… The report and testimony of plaintiff’s expert…supports this finding…

concluded that the [Plaintiff’s] trademark is known to approximately fifty-three percent of the Internet users who would be exposed to the defendant…and fifty-seven percent of the international travelers who would be exposed to the [Plaintiff’s] trademark. See 4 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:92, at 24-169 (2001 ed.) (trademark may be characterized as famous if it is known to more than fifty percent of the defendant’s potential customers)…[the] survey also shows that the [Plaintiff’s] trademark is known to approximately forty-five percent of the United States public as a whole. See Ringling Bros.-Barnum & Bailey Combined Shows, Inc. v. Utah Div. Of Travel Dev., 955 F. Supp. 605, 613 n. 4 (E.D. Va. 1997), aff’d, 170 F.3d 449 (4th Cir. 1999) (survey showing that over forty percent of United States general public recognized trademark supported conclusion that the mark was famous).

Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790, 803, 805, 807-808 (W.D. Tenn. 2001)

Courts that have held that the FTDA requires a showing of only a “likelihood of dilution” criticize focusing on the phrase “causes dilution” as using “excessive literalism to defeat the intent of the statute.” …They primarily argue that it will be difficult for trademark owners to provide evidence of actual dilution, even by such common means as revenue data and consumer surveys:…

… …to that end, [Plaintiff] has submitted the results of a survey…

… …that…suffices as proof that [Defendant’s] use of the Cartoon Tiger to

market convenience food products causes dilution “by blurring.”… …

…survey provides evidence that [Plaintiff’s] Tony the Tiger has been “linked” to [Defendant’s] Cartoon Tiger…

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Societe Des Produits Nestle S.A. v. La Cibeles, Inc., 2001 T.T.A.B. LEXIS 93, *3, *5 (T.T.A.B. 2001) (This disposition is not citable as precedent of the T.T.A.B.)

…Marketing surveys conducted for opposer demonstrate that more than 50% of the consumers in the United States are aware of the NESCAFE brand of instant coffee.

… …As a result of opposer’s sales and promotional activity, and the survey

demonstrating recognition of the mark, we find opposer’s NESCAFE mark is a famous mark…

Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083, 1099, 1011 (C.D. Cal. 2000)

…The only evidence of the strength or distinctiveness of the plaintiffs’ Gigante mark in 1991 is the…[r]eport. According to that report, as of the time the defendants began using the name Gigante, 22% of Mexican-Americans in San Diego had heard of the plaintiffs’ Gigante mark…

… …the…[r]eport shows that, as of 1991, 22% of Mexican-Americans in

San Diego were aware of the plaintiffs’ Gigante mark. Although this level of recognition is sufficient to protect the plaintiffs’ mark from infringement, the Court finds that it is not sufficient to establish that the plaintiffs’ mark is famous enough to be protectable from dilution. See, e.g., McCarthy, supra, § 24:92 at 24-168 (stating that mark should not be considered famous unless it is known to more than 50% of defendant’s potential customers); Ringling Brothers--Barnum & Bailey Combined Shows, Inc., v. Utah Div. of Travel Dev., 955 F.Supp. 605, 613 n. 4 (E.D.Va.1997) (finding mark was famous, in part, because survey evidence shows that mark was recognized by over 40% of nationwide class of respondents).

Seagate Technology, Inc. v. Seagate Office Products, Inc., 2000 T.T.A.B. LEXIS 622, *8, *17 (T.T.A.B. 2000) (This disposition is not citable as precedent of the T.T.A.B.)

A[n]…independent telephone survey of subscribers to several magazines showed that petitioner had both the highest unaided and aided brand awareness amongst both businesses (33% and 71%, respectively) and resellers (52% and 79%, respectively)…

… …petitioner has established that its mark is a famous one in the computer

storage product field… Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504, 1509 (T.T.A.B. 2000)

Applicant has also objected to the entire testimony… as being beyond the scope of proper rebuttal. This testimony relates to a survey taken by opposer with

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respect to public awareness of the HARD ROCK CAFE restaurants. Because evidence of such awareness goes to the fame of the mark, it is properly part of opposer’s case-in-chief. The objection is sustained.

Simon Property Group, L.P. v. mySimon, Inc., 2000 U.S. Dist. LEXIS 12227, *19-*20 (S.D. Ind. 2000)

[Plaintiff] also relies on a November 1997 survey as evidence that its mark was famous among consumers. The survey…[i]n a test for unaided awareness of mall management companies, respondents were asked: “When thinking of companies that manage shopping malls or shopping centers, which one comes to mind first? What others?”…This question was presented to 685 respondents, 498 of who stated that they shopped at Simon DeBartolo Group malls most often while 187 shopped most often at other malls. [Plaintiff] boldly asserts that “Simon was recognized by 15% of the respondents as the mall management company.”…That is not an accurate representation of the survey results. The survey results state that 15 percent of respondents named either DeBartolo, Simon DeBartolo, or Simon… DeBartolo, Simon DeBartolo, and Simon are different marks. Evidence of consumer awareness of the DeBartolo name or the Simon DeBartolo name is not evidence of consumer recognition of the Simon mark. In fact, [Plaintiff’s] survey shows that only a meager 3 percent of respondents, or approximately 21 people out of 685 polled, named Simon as a shopping mall management company without prompting from the interviewer… While this survey shows that a small percentage of consumers are familiar with the Simon mark, it is not evidence from which a reasonable trier of fact could conclude that the Simon mark was famous among consumers prior to October 1998. It is powerful evidence to the contrary…these survey results…[fall] far short of establishing anything recognizable as “fame” for purposes of the Anti Dilution Act. [Plaintiff’s] own survey shows as a matter of law that all these efforts have not generated fame sufficient to warrant protection under the FTDA…

M2 Software, Inc. v. Viacom, Inc., 119 F. Supp. 2d 1061, 1068, 1072 (C.D. Cal. 2000)

Defendants properly point out that plaintiff has failed to submit survey evidence or any proof that “an appreciable number of reasonably prudent purchasers exercising ordinary care” have been confused as to the source of plaintiff’s product…

… Defendants offer survey evidence that the [Plaintiff’s] trademark is not

famous. A survey was conducted telephonically with 501 random respondents. The [Plaintiff’s] mark received “a very low-level awareness” according to defendants’ expert...The awareness factor was 12% on an aided basis. The expert notes that 11% responded favorably to completely fictitious marks, and that a

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broad range of products were connected with the [Plaintiff’s] mark. Only 1% connected [Plaintiff] with CD’s or music videos.

Plaintiff’s mark is not famous, and more importantly, it was not famous at the time defendants entered the market…Defendants are entitled to summary judgment on plaintiff’s dilution claims.

Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261, 1270-1271 (S.D. Fla. 1999)

The Plaintiff relies on survey evidence…to show consumer recognition of the “Fun Ship” mark. The Plaintiff points out that when asked if they had heard of the “Fun Ship” slogan, 68% of respondents stated that they had. When asked which cruise line uses the “Fun Ships” slogan, 58% said Carnival. The Defendant challenges the results of the survey as biased and aided by specific identification of seven cruise line names. It is also noteworthy that one of the qualifications for the respondents was that they be “very or somewhat interested in taking a cruise ship vacation in the next three years.” Therefore, it is evident that the respondents do not represent the general public.

… Given the weaknesses of the survey evidence and the fact that [Plaintiff]

and [Defendant] do not operate in the same market, the Court finds that even if the “Fun Ship” mark is somewhat well-recognized among individuals planning to take a cruise in the near future, this does not render the mark “famous” for purposes of the dilution analysis.

Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 879 (9th Cir. 1999)

[Plaintiff] submitted three market research studies regarding perceptions of the “Avery” and “Avery Dennison” brands. Discussion groups through which one study was conducted were formed “using [Plaintiff] client lists,” and produced the conclusion that the “Avery” name has “positive associations ... among current customers.” Surveyed persons in the other two studies were mostly “users and purchasers of office products” and “[o]ffice supply consumers.” The one consumer group that did not necessarily include office supply purchasers for businesses was still required to be “somewhat” or “very” familiar with [Plaintiff’s] products in order to be counted. [Plaintiff’s] marketing reports are comparable to a survey we discussed in Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir. 1981), proving only the near tautology that consumers already acquainted with Avery and Avery Dennison products are familiar with [Plaintiff]…The marketing reports add nothing to the discussion of whether consumers in general have any brand association with “Avery” and “Avery Dennison,” and no evidence of product awareness...[related] specifically to the “Dennison” trademark. Although proper consumer surveys might be highly relevant to a showing of fame, we reject any reliance on the flawed reports submitted by [Plaintiff].

Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development, 170 F.3d 449, 463 (4th Cir. 1999)

We affirm as not clearly erroneous the district court’s assessment that the consumer survey evidence does not support a finding of dilution under the federal Act. While we might have some concern with the implicit finding that this evidence does not even show the requisite threshold “mental association” of the two marks within the consumer market surveyed, we have no concern respecting the specific finding that the survey evidence does not show that use of [Defendant’s] junior mark had caused any actual harm to [Plaintiff’s] mark in the form of a lessening of that mark’s former capacity to identify and distinguish [Plaintiff’s] circus as its subject. And that, of course, suffices to support the court’s ultimate conclusion.

Hershey Foods Corp. v. Mars, Inc., 998 F. Supp. 500, 501 (M.D. Pa. 1998)

A manufacturer of peanut butter candy failed to show likelihood of success on its claim that a competitor’s trade dress created a “blurring” of that portion of its trade dress...as required to obtain a preliminary injunction against the competitor’s continued use of the competitor’s trade dress in a trademark dilution action, even though there was a survey showing that...participants... misidentified the candy as coming from the manufacturer; the survey was flawed...

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FALSE ENDORSEMENT SURVEYS

Amazon Inc. v. Cannondale Inc., 56 U.S.P.Q.2d 1568, 1578 (D.C. Colo.. 2000)

[Plaintiff] has not presented any survey evidence as to the existence of consumer confusion regarding Ms. Giove’s continued affiliation with [Defendant]. Several courts have held that a plaintiff’s failure to conduct a consumer survey, assuming it has the financial resources to do so may lead to an inference that the results of such a survey would be unfavorable…

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GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE SURVEYS

In re Kimpton Hotel & Restaurant Group Inc., 55 U.S.P.Q.2d 1154, 1157-1158 (T.T.A.B. 2000)

With regard to the Examining Attorney’s objections, we do agree…that an insufficient number of survey respondents was included in applicant’s survey. Moreover…When survey respondents were asked if they thought the hotels shown in the material provided “are connected or affiliated with the country or principality of Monaco,” we believe it possible, if not likely, that many of the survey respondents may have interpreted “connected or affiliated with” to mean some sort of official or governmental ownership or sponsorship by the principality of Monaco. The more appropriate question…would have been whether the survey respondents believed that applicant’s hotels (or hotel services) have their origin in or come from Monaco…Because we cannot, of course, determine how the question was interpreted by the survey respondents, and because of the insufficient number of survey respondents, we do not find the survey results to be persuasive or probative.

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SCANDALOUS/DISPARAGING MARKS SURVEYS Order Sons of Italy in America v. Memphis Mafia Inc., 52 U.S.P.Q.2d 1364, 1367 (T.T.A.B. 1999)

…[Petitioner] also placed in evidence a public opinion study conducted in 1990…with respect to prevalent social attitudes toward certain ethnic groups including Italian-Americans…

… …While in the public opinion study made of record by petitioner a general association was found to exist between Italian-Americans and organized crime, no mention was made of the term “Mafia,” or whether its use, regardless of context, would automatically trigger this association.

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COPYRIGHT SURVEYS Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792, 801 (9th Cir. 2003)

…In support of this argument, [Plaintiff] offered into evidence a survey in which they presented individuals from the general public in a shopping mall with color photocopies of [Defendant’s] photographs and asked them what meaning they perceived. Relying on this survey, [Plantiff] asserts that only some individuals may perceive parodic character.

The issue of whether a work is a parody is a question of law, not a matter of public majority opinion… We decline to consider [Plaintiff’s] survey in assessing whether [Defendant’s] work can be reasonably perceived as a parody. Parody is an objectively defined rhetorical device. Further, because parody is “a form of social and literary criticism,” it has “socially significant value as free speech under the First Amendment.”…While individuals may disagree on the success or extent of a parody, parodic elements in a work will often justify fair use protection…Use of surveys in assessing parody would allow majorities to determine the parodic nature of a work and possibly silence artistic creativity. Allowing majorities to determine whether a work is a parody would be greatly at odds with the purpose of the fair use exception and the Copyright Act...

A & M Records v. Napster, Inc., 239 F.3d 1004, 1016-1017 (9th Cir. 2001)

…plaintiffs’ expert…conducted a survey…using a random sample of college and university students…The court recognized that the [Plaintiff’s expert] focused on just one segment of the Napster user population and found “evidence of lost sales attributable to college use to be probative of irreparable harm for purposes of the preliminary injunction motion.”…

… As for defendant’s expert…The district court found problems in

[Defendant’s expert’s] minimal role in overseeing the administration of the survey and the lack of objective data in his report…

A & M Records v. Napster, Inc., 114 F. Supp. 2d 896, 909, 910 n.15, 914 (N.D. Cal. 2000)

…Plaintiffs’ expert…opined that forty-one percent of her college-student survey respondents “gave a reason for using Napster or described the nature of its impact on their music purchases in a way which either explicitly indicated or suggested that Napster displaces CD sales.”…[Plaintiff’s expert’s] overall conclusion was that “[t]he more songs Napster users have downloaded,” the more likely they are to admit or imply that such use has reduced their music purchases…

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For the reasons discussed in the court’s separate order, the report by defendant’s expert…does not provide credible evidence that music file-sharing on Napster stimulates more CD sales than it displaces...

n.15… Among the shortcomings the court noted are…[Defendant’s expert’s] heavy reliance on journalistic articles and studies that he did not conduct, the fact the centerpiece of his report is a survey that he only distantly supervised, and the lack of tables offering statistical breakdowns of survey respondents and their answers.

… …[Plaintiff’s expert] reached the overarching conclusion that the more

songs Napster users download, the more likely they are to reveal that such use reduces their music buying…evidence suggests that sampling and building a free music library through unauthorized downloading are not mutually exclusive: it is likely that survey respondents who sample are primarily direct infringers…

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PATENT SURVEYS Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678, *13-*14, *17-*22 (N.D. Ill. 2010)

[Plaintiffs’ expert] conducted a survey and an experiment supporting Plaintiffs’ claims of patent and trade dress infringement, and prepared an expert report that Plaintiffs seek to admit into evidence. The survey consisted of asking respondents, who were primarily college students, to compare the [Defendant’s] Pillow Top calculator to the ‘734 patented design and then with [Plaintiffs’] Bubble Calculator, and to answer five questions about the comparisons...The experiment was a classroom experiment designed by [Plaintiffs’ expert] in order to simulate the purchasing situation in which prospective consumers of the two calculators might find themselves...[Plaintiffs’ expert] created and administered the experiment.

... The probative value of a survey depends in large part upon the “universe” of respondents, and the reliability of the survey is diminished if the universe of desired respondents is erroneous or undefined...[Plaintiffs’ expert] did not define a universe when developing the survey...Later, however, he defines the universe as the general purchasing public with an ability to perceive...The reliability of the survey is diminished by [Plaintiffs’ expert’s] failure to define his target universe, and its relevance is greatly harmed by...failure to focus the survey on the consumers in the market at issue in this case...

Once a universe is identified, a reliable survey must select a sample population that accurately represents the universe...The survey population of college students is underinclusive, and thus the survey’s value depends on the extent to which the excluded population is likely to react differently from the included population. [Plaintiffs’ expert] does not analyze this issue, but only states that, based on “common sense,” college students represent a “conservative population” for the survey...Without a more adequate justification, however, the underinclusive sample population seriously diminishes the reliability of the survey...

A reliable survey should avoid the use of confusing or ambiguous questions...The questions in [Plaintiffs’ expert’s] survey, however, are replete with potential ambiguities. For example, questions...ask whether the respondent thinks the calculators “come from a single source.”...Survey respondents could interpret “source” to mean manufacturer, retail store, country of origin, or one of many other potential sources. [Plaintiffs’ expert] testified that a respondent may have been confused and asked about this language...This potential confusion undermines the reliability of the survey, even though the existence of any actual confusion as to the meaning of the questions cannot be ascertained.

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Some respondents to a survey will not have an opinion on a question asked, which can result in a respondent guessing as to the “right” answer. Reliable surveys address this issue through the use of filter questions and “don’t know” or “no opinion” answer alternatives...Here, the questions used in the survey allowed for only “yes” or “no” responses...The survey’s reliability is significantly compromised by its failure to use open-ended questions or to allow for “don’t know” responses...

In order to ensure their objectivity, reliable surveys are conducted using double-blind research methodology whenever possible...Here, the administrators knew that the survey was intended for use in a patent infringement case...The takers also potentially knew the purpose of the survey before taking it...Failure to conduct an appropriate double-blind study limits the reliability of the survey.

Steps must be taken to ensure that data are classified and recorded consistently and accurately. [Plaintiffs’ expert] testified that [Plaintiffs’ expert] received all the survey responses...“in one batch.” [Plaintiffs’ expert’s assistant], however, testified that [Plaintiffs’ expert’s assistant] sent each day’s results separately....Further, two different people administered the Survey, and did not use a uniform method of administration...Worse, it is possible that certain respondents took the survey more than once...The Court’s confidence in the reliability of the survey’s collected data is gravely diminished by these collection and recording irregularities.

Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317, 1325-1326 (Fed. Cir. 2009)

[Plaintiff’s] second expert…conducted a double-blind survey of blender users, and testified that during his survey he observed a certain percentage of users insert the stir stick into the pitcher but not stir it. [Plaintiff] offered this testimony as evidence that some of [Defendant’s] customers use the accused products in an infringing manner. The district court struck the…report as irrelevant because [Plaintiff’s expert] only testified as to whether and how the survey participants used the stir stick…The district court concluded that his testimony did not establish whether any infringing act actually occurred and was therefore not relevant to the issue of direct infringement on the part of [Defendant’s] customers…

… We find that the district court erred as a matter of law in disposing

of the direct infringement claims by requiring direct evidence of infringement. The court discounted the accusations against [Defendant’s employees] because there was no testimony or footage showing actual infringement in those cases. Such evidence, however, is not required…

We also find that the district court erred as a matter of law in striking the testimony of [Plaintiff’s survey expert] and thereby disposing

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of [Plaintiff’s] allegations of direct infringement by [Defendant’s] customers. [Plaintiff’s expert’s] testimony need not establish the ultimate question of infringement to be relevant…

We find that the combination of [Defendant’s employees’] testimony is circumstantial evidence that creates genuine issues of material fact regarding whether employees of [Defendant] engaged in acts of direct infringement. We also find that the combination of [Plaintiff’s experts’] testimonies is circumstantial evidence that created genuine issues of material fact regarding whether and when the accused device performs the infringing method…

Applera Corp. and Roche Molecular Systems, Inc. v. MJ Research Inc., 389 F. Supp. 2d 344, 350 (D. Conn. 2005)

A review of [Plaintiffs’ expert’s] surveys…reveals rigorous methodological standards applied by an experienced survey researcher using a double blind survey protocol…and clear, precise, and predominately non-leading questions…In addition, the questions pertained in part to experiences learned by direct perception and to events that are unlikely to be forgotten, namely the usage of thermal cyclers in respondent’s lab during a period not exceeding six years, and were posed to individuals who by self-report were the most knowledgeable in the lab about such usage. With respect to the notice prong of Rule 807, defendants had all three surveys since September 2002. Defendants provided in discovery their invoice database from which [Plaintiffs’ expert] selected respondents and thus [Defendants] could have conducted its own survey of [Defendants’] customers to test the reliability of [Plaintiffs’ expert’s] methodology and/or results. In fact…researchers are prohibited by ethical rules from disclosing the actual individual identities of the survey respondents and instructed to defend against Court orders compelling disclosure…The Reference Manual for Scientific Evidence published by the Federal Judicial Center instructs that, because of such ethical obligations, identifying information such as names and addresses should be removed from survey data before it is provided to opposing counsel… Under the circumstances of record here, the Court believes the name and address requirement of Rule 807 has been satisfied. To hold otherwise would require exclusion of trustworthy evidence on material facts in this case and violate the mandate of Fed. R. Evid. 102…

Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896, *76-*77 (S.D. Ind. 2004)

…[Plaintiff’s] survey purports to find the approximately 62% of patients who use portable oxygen units would consider the ESCORT’s design similar to that of the ‘056 patent. However, the hypothetical “ordinary observer’ in the Gorham test both speaks to “purchasers” and must be “objective.”…[Plaintiff] admits that the “purchaser” of the portable oxygen units in question is not the

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patient…The purchaser of portable oxygen units is the medical equipment distributor…[Plaintiff] admits that physicians and medical equipment distributors were their first targets when it introduced [its oxygen tank] because those groups made the purchasing decision…It follows then that any survey of “ordinary observers’ in this case must include medical equipment distributors, at the least, and possibly, hospitals and physicians, at best, to ensure that all relevant purchasers’ views are considered. [Plaintiff’s] survey simply misses these key “ordinary observer” groups, and as a result, is not nearly broad enough to create an issue of fact on infringement.

Spotless Enterprises, Inc. v. A&E Products Group L.P., 294 F. Supp. 2d 322, 347 (E.D. N.Y. 2003)

[Plaintiff] introduced survey evidence that purportedly shows that purchasers of the hangers erroneously identified the [Defendant’s] hanger as being the same as the design depicted in the ‘246 design patent. In the survey, six buyers for garment manufacturers were shown a drawing from the ‘246 design patent and were then shown a collection of hangers including [Defendant’s] hanger with a size cap and asked, “Do you think any of these hangers are the same as the hanger in the drawing?” However, the survey is severely flawed and does not assist in the infringement determination because all the hangers shown in the survey, other than the [Defendant’s] hanger, did not have upswept arms. As such, the only hanger remotely related to the dominant feature of the patent (the upswept arms), was the [Defendant’s] hanger. (For example, the survey did not include a non-[Defendant] design with upswept arms that would not infringe upon the ‘246 design patent such as any of the alternative designs proposed by [Plaintiff] in Exhibit 1473.) Moreover, as explained above, the confusion must be related to the ornamental aspects of the design. Accordingly, the survey is not probative of confusion…

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FIRST AMENDMENT ISSUES

Avocados Plus Inc. v. Mike Johanns, 2007 U.S. Dist. LEXIS 4572, *8, *10 (D. D.C. 2007)

…[The Court] reopened discovery to allow the government and intervenors to depose plaintiffs’ survey designer and to submit affidavits in opposition using their own survey experts that would explain why or whether the internet survey was reliable enough to enable a trier of fact to render a judgment in plaintiffs’ favor…

… …the survey itself is fatally flawed. First, plaintiffs’ own expert admitted that the ad shown to the survey respondents was not attributed to anyone specifically…He also admitted that it was unlikely that any of the respondents would have identified, unaided by the design of the survey, any of the plaintiffs as sponsors of the ad…Second, plaintiffs declined to provide any underlying documentation about the survey, such as their expert’s files documenting specific data on the age, distribution, income, occupation, and gender of the respondents, or even the actual screenshots of what information was actually shown to the respondents…

Avocados Plus Inc. v. Mike Johanns, 421 F. Supp. 2d 45, 54, 56, 57 (D. D.C. 2006)

Plaintiffs’ freedom of association claim…rests on their contention that the Avocado Act forces them to associate with producers against whom they compete…

… Plaintiffs’ argument appears calculated to fit within a narrow exception left open in Livestock Marketing…“if the advertisements associated their generic pro-beef message with either the individual or organization respondents, then respondents would have a valid as-applied First Amendment challenge: because “the government may not…associate individuals or organizations individually with speech by attributing an unwanted message to them.”… Given that Avocado Act promotions make no reference to individual avocado growers or importers, the Court has grave doubts that Plaintiffs can succeed on their as-applied claim… To survive the pending summary judgment Motions, Plaintiffs must demonstrate that the survey provides enough evidence that a reasonable factfinder could return a judgment in their favor… Several of Defendants’ criticisms of the survey’s methodology seem well-founded…The survey first required respondents to look at an Avocado Act promotion and then to read a complete list of Plaintiffs. Only then did respondents proceed to the question: “Do you believe that any of these companies was the source of the advertisement you just saw”.This format seems unnecessarily suggestive, and Defendants may be correct

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that it was “the survey itself, not the advertisement, that planted the seed of a possible connection between the advertisement and Plaintiffs.”…A less suggestive survey might have yielded results that are significantly different, and significantly less favorable to Plaintiffs. Consequently, the Court is far from satisfied that the survey is reliable enough to enable a reasonable factfinder to find in Plaintiffs’ favor on their as-applied claim.

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DAUBERT/ADMISSIBILITY ISSUES 1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948, *28 (D. Utah 2010)

...Although technical flaws typically go to weight rather than admissibility, the flaws in this survey’s universe and crucial questions are so substantial as to render the survey unreliable. The problem is exacerbated by [Plaintiff’s expert’s] failure to design the survey so as to allow subclasses to be separately examined to test the validity of the information. For example, the threshold question was compound without any ability to determine which respondents had actually used or would use the Internet to purchase contact lenses. The court therefore concludes that Plaintiff has failed in its burden of establishing that [Plaintiff’s expert’s] survey is admissible under Rule 702.

LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721, *39-*42 n.2 (N.D. Ill. 2010)

n.2 During the Daubert hearing, the parties raised the issue of whether expert testimony was necessary to establish the materiality element in Lanham Act cases. Courts do not require that a party proffer expert testimony to establish that the subject of the false or misleading advertising was material to the consumer’s decision to purchase the goods. See, e.g., Osmose, Inc. v. Viance, LLC, 210 U.S .App. LEXIS 15896, 48-49 (11th Cir. July 30, 2010) (holding that in order to establish materiality the plaintiff must demonstrate that “the defendant’s deception is likely to influence the purchasing decision” and upholding district court’s finding that the materiality of the defendant’s statements were “self-evident” because “the advertisements attacked an inherent quality of [the product], namely its ability to prevent decay and preserve the structural integrity of wood”); N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1226 (11th Cir. 2008) (holding that the evidence “amply supports the district court’s conclusion that [the defendant’s] statements are material to consumers’ purchasing decisions” based on letters from doctors who had purchased the machine at issue and expressed their dissatisfaction with their inability to rely on the claims regarding the machine at issue in the litigation); Cashmere & Camel Hair Mfs. Inst. v. Saks Fifth Ave., 284 F.3d 302, 311-312 (1st Cir. 2002) (holding that it was reasonable to conclude that “defendants’ misrepresentation of the blazers’ cashmere content was material because it relates to a characteristic that defines the product at issue, as well as the market in which it is sold: and that it was “reasonable to infer from defendants’ aggressive marketing strategy highlighting the ‘cashmere’ nature of the blazers that defendants themselves believed cashmere to be an inherent and important characteristic of the blazers”)...

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[Plaintiff’s] attempt to save [Plaintiff’s expert’s] opinion by arguing that [Plaintiff’s expert] is merely telling the jury what the appropriate materiality inquiry is does not save the day. As discussed below, the Court will instruct the jury as to materiality in this case, not [Plaintiff’s expert].

Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678, *16-*17 n.2, *24-*25 (N.D. Ill. 2010)

n.2 ...the Court notes that in addition to the portions of [Plaintiffs’ expert’s] testimony that are based upon the survey and the experiment, [Plaintiffs’ expert’s] planned testimony includes analysis of the ‘734 patent whether there is infringement of the ‘734 patent in this case, discussion of trade dress infringement, and analysis of secondary meaning with respect to trade dress doctrine...[Plaintiffs’ expert’s] educational and professional background does not show expertise in the areas of patent infringement, patent claim construction or analysis, comparison of patent claims, trade dress infringement, secondary meaning, or likelihood of confusion. Further, [Plaintiffs’ expert] states “I have been informed that determining patent infringement is a two-step process.”...This statement further indicates a lack of expertise in the area of patent infringement. The Court therefore finds that [Plaintiffs’ expert] is unqualified to testify as an expert witness with respect to these issues.

... The district court is not required to conduct a hearing when

considering whether proposed expert testimony should be admitted...It is within the court’s discretion to decide whether there is a sufficient basis to exclude expert testimony without holding a hearing...In light of [Plaintiffs’ expert’s] failure to comply with generally-accepted principles of survey research and lack of evidence to show that he satisfies the requirements of Rule 702, the Court finds there is a sufficient basis for excluding [Plaintiffs’ expert’s] expert testimony without a hearing. Expert testimony regarding the behavior and expectations of consumers in the marketplace is usually relevant because consumer behavior is a critical factor in the consideration of trade dress...Here, however, the Court finds that the methods used in the administration of both the survey and the experiment render the data collected of so little reliability and utility as to be irrelevant...[Plaintiffs’ expert’s] proposed testimony provides no helpful evidence as to the actual behavior of actual consumers of the products at issue in this litigation, and is therefore excluded.

[Defendant’s] Motion to Strike [Plaintiffs’ expert’s] proposed testimony is therefore granted. The Court’s analysis of [Defendant’s] Motions for Summary Judgment will proceed without reference to [Plaintiffs’ expert’s] expert report.

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Rexall Sundown, Inc. v. Perrigo Co., 651 F. Supp. 2d 9, 24-26, 28 (E.D.N.Y. 2009)

[Defendant] contends that [Plaintiff’s] survey is inadmissible because it is fatally flawed and, therefore, [Plaintiff’s expert’s] Report should not be considered by this Court… As set forth below, the Court finds that the [Plaintiff’s expert’s] Report is admissible under Daubert and is sufficient to raise genuine issues of fact to survive summary judgment… In deciding whether a motion for summary judgment should be granted, a district court may only consider admissible evidence…In other words, “(t)he court performs the same role at the summary judgment phase as at trial; an expert’s report is not a talisman against summary judgment.”…Thus, if the expert testimony is excluded as inadmissible under the Rule 702 framework articulated in Daubert and its progeny, the summary judgment determination is made by the district court on a record that does not contain that evidence…Such an analysis must be conducted even if precluding the expert testimony would be outcome determinative…Accordingly, the Court must examine the admissibility of plaintiff’s expert testimony in ruling on defendant’s motion for summary judgment. …Because defendant has only challenged the admissibility of the survey and [Plaintiff’s expert’s] testimony…the Court will proceed to the question of whether that report adequately depends upon “reliable data and methodology.” With respect to reliability, “‘the district court should consider the indicia of reliability identified in Rule 702, namely, (1) that the testimony is grounded on sufficient facts or data; (2) that the testimony is the product of reliable principles and methods; and (3) that the witness has applied the principles and methods reliably to the facts of the case.’”… The proponent of the expert testimony bears the burden of establishing the admissibility of such testimony under the Daubert framework by a preponderance of the evidence standard…

… Having reviewed the submissions related to [Plaintiff’s] expert, including [Plaintiff’s expert’s] Declaration, the Court concludes that there is no basis to exclude his testimony under Daubert. [Defendant’s] objections in this particular case regarding the methodology of the study, even if proven and fully credited, clearly go to the weight of the [Plaintiff’s expert’s] Report, rather than its admissibility… [Defendant] has highlighted potential flaws in the survey methodology, but given that there is sufficient indicia of reliability to allow admission of [Plaintiff’s expert’s] testimony, “[v]igorous cross examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.”…Accordingly, the Court declines to rule at this juncture that the survey is so unreliable as to be inadmissible.

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Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458, *17 n.3 (S.D.N.Y. 2009)

…[Defendant] argues that the [Plaintiff’s expert’s] survey is flawed in its methodology and that the expert report based on the survey fails to meet the standard for admissibility under Daubert…In general, assertions of methodological errors in a survey “bear exclusively on the weight to be given the survey rather than bearing on an admissibility determination under Fed. R. Evid. 403.”…Moreover, where a bench trial is in prospect, resoving Daubert questions at a pretrial stage is generally less efficient than simply hearing the evidence; if [Defendant’s] objections are well-taken, the testimony will be disregarded in any event.

Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384, 439 (D. N.J. 2009)

Together, Daubert and Rule 702 impose three requirements for admissibility of expert testimony: “qualification, reliability, and fit.”…First, the witness must have specialized expertise appropriate to his testimony…Second, the testimony must be reliable, which excludes opinions based on subjective belief or speculation; the opinion instead must “reliably flow from the facts known to the expert and the methodology used.”…Third, the testimony must be relevant to issues in the case and assist the trier of fact…

The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857, *12 (D. Utah 2008)

…Defendants argue that [Plaintiff’s expert’s] testimony is insufficient because he surveyed persons other than those who were known to actually have heard the Amvox message. As this Court noted in its Order denying Defendants’ Daubert challenge to the admissibility of [Plaintiff’s expert’s] testimony, such challenges to the survey are credibility challenges for the jury to resolve…

The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495, *11-*12 (E.D. Tex. 2008)

The Court also agrees that [Plaintiff] cannot prove that [Defendant’s] actions create a likelihood of confusion…[Defendant] has attached as an exhibit the results of a survey performed by its expert…the challenges to which this Court has addressed in a separate order. [Defendant’s expert] finds no likelihood of confusion. The Court has also previously excluded the report of [Plaintiff’s] expert…finding such survey to be too flawed to be reliable. As [Defendant] correctly points out, only [its expert’s] survey addresses the issue of source confusion.

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Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763, *3-*6, *8 (D. Kan. 2008)

The Court has broad discretion in deciding whether to admit expert testimony…Fed. R. Evid. 702 provides that a witness who is qualified by knowledge, skill, experience, training or education may testify in the form of opinion or otherwise as to scientific, technical or other specialized knowledge if such testimony will assist the trier of fact to understand the evidence or to determine a fact in issue, “if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case.”… The proponent of expert testimony must show “a grounding in the methods and procedures of science which must be based on actual knowledge and not subjective belief or unaccepted speculation.”…In order to determine whether an expert opinion is admissible, the Court performs a two-step analysis. “[A] district court must [first] determine if the expert’s proffered testimony . . . has ‘a reliable basis in the knowledge and experience of his discipline.’” …Second, the district court must further inquire into whether the proposed testimony is sufficiently “relevant to the task at hand.”…An expert opinion “must be based on facts which enable [him] to express a reasonably accurate conclusion as opposed to conjecture or speculation . . . absolute certainty is not required.”…And it is not necessary to prove that the expert is “indisputably correct,” but only that the “method employed by the expert in reaching the conclusion is scientifically sound and that the opinion is based on facts which satisfy Rule 702’s reliability requirements.”… Daubert sets forth a non-exhaustive list of four factors that the trial court may consider when conducting its inquiry under Rule 702: (1) whether the theory used can be and has been tested; (2) whether it has been subjected to peer review and publication; (3) the known or potential rate of error; and (4) general acceptance in the scientific community…But “the gatekeeping inquiry must be tied to the facts of a particular case.”… It is within the discretion of the trail court to determine how to perform its gatekeeping function under Daubert….The most common method for fulfilling this function is a Daubert hearing, although such a process is not specifically mandated…

* As a general rule, “public recognition surveys may be used to establish a likelihood of confusion."…And “[t]echnical and methodological deficiencies in a survey usually relate to the weight to be given to the survey, not its admissibility.”…However, “when the deficiencies are so substantial as to render the survey’s conclusions untrustworthy, a court should exclude the survey from evidence.”…To determine if a survey is reliable and trustworthy, the Court considers a variety of factors…

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Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347, 367-368 (W.D.N.Y. 2008)

In the instant case, [Defendant] has presented evidence regarding actual instances of consumer confusion, as well as survey evidence. With regard to the survey evidence, [Defendant] states that its “professional market survey” “confirms that there is a significant tendency for consumers to be confused…However, the Court declines to consider the pilot survey, since [Defendant] did not produce it in discovery…Even if [Defendant] had produced the survey summary during discovery, the Court would exclude it in any event, since it does not satisfy the criteria for admissibility… Here, [Defendant’s] “survey” is a two-page summary of a pilot survey involving 52 consumers…[n.18 [Defendant] did not submit an affidavit from the individuals(s) who conducted the pilot survey.]…The summary does not include photographs of the actual bottles used. Moreover, although the summary states that the consumers “were asked a series of questions designed to assess confusion as to source, confusion as to association or connection, and confusion as to sponsorship or authorization, and the reasons for their confusion,” it does not provide the actual questions asked or answers given…Consequently, the Court cannot determine if the summary evidence is reliable…

Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853, 864 n.8 (10th Cir. 2008)

n.8 That brings us to the question of [Plaintiff’s] survey evidence. Evidence of actual confusion is often introduced through the use of surveys, “although their evidentiary value depends on the methodology and question asked.”…Following a Daubert hearing, the district court concluded flaws in methodology made [Plaintiff’s] survey data and supporting expert testimony unreliable “as a basis for drawing conclusions about confusion or the likelihood of confusion in the relevant market of potential purchasers of the type of services offered by [Plaintiff]…A careful review of the record in light of the applicable law makes clear the district court most assuredly did not abuse its discretion in excluding from trial [Plaintiff’s] survey evidence…The survey suffered from question bias, interviewer bias, location bias, participant bias, and timing bias…

Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558, 561-563 (S.D.N.Y. 2007)

District courts are tasked with the “special obligation”…of serving as the “gatekeepers” of expert evidence, and must therefore decide which experts may testify and present evidence before the jury…Recognizing that a purported expert’s opinion often carries special weight with the jury

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even when unwarranted,…the Supreme Court has directed district courts to “ensure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.”…Courts are given “broad latitude” in deciding “how to determine reliability” and in making the “ultimate reliability determination.”…In doing so, however, courts are reminded that the Federal Rules of Evidence favor the admissibility of expert testimony,…and their “role as gatekeeper is not intended to serve as a replacement for the adversary system.”…Indeed, “where the expert’s conclusion is drawn from a reliable methodology…the correctness of that conclusion is still an issue for the finder of fact.”…As a result, excluding expert testimony is the exception rather than the rule,…particularly since “vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof” can serve as the means to “attack shaky but admissible evidence.”…[Footnotes omitted.]

* As evident from the Report and Recommendation…issued by…[the Special Masters, Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2007 U.S. Dist. LEXIS 92167 (S.D.N.Y. 2007)], much of the expert testimony proffered by the parties here warrants exclusion. The Special Masters acknowledged that their recommendation to exclude the majority of the expert testimony may seem “drastic.”…They justify their conclusions, inter alia, on the ground that while methodological flaws in a survey generally raise questions of weight rather than admissibility, “questions of weight, when sufficiently accumulated, become so serious as to require exclusion.”…

Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320, *20, *24-*25, *31-*33 (S.D.N.Y. 2007)

The [Plaintiff’s expert’s] Survey is so flawed that its probative value is substantially outweighed by its potential for unfair prejudice and the likelihood that it will confuse or mislead the jury. Two major defects strip the [Plaintiff’s expert’s] Survey of probative value. Specifically, the survey (1) employed a format that failed to approximate real world conditions and was impermissibly leading, and (2) used improper stimuli.

* In addition to failing to approximate actual marketplace conditions, the survey’s back-to-back design was impermissibly leading. After viewing the seriatim display of non-competing products that few if any respondents actually would have encountered in close physical or temporal proximity in real life, the respondents were given multiple choice questions in which they were asked whether they believed a connection, as to source, business relationship, or sponsorship, existed between the companies whose marks the respondents had just seen. Rather than measure any actual confusion, however, these questions were far more likely to generate “demand effects” by suggesting the existence of a

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connection between the products that the respondents would not have made on their own…

* Here, the [Plaintiff’s expert’s] Survey displayed to respondents a purported “ad” for [Plaintiff], in the form of a blown-up photo of a Blackberry cellphone that prominently featured the [Plaintiff’s] logo. That “ad”, however, was not an actual advertisement that a prospective user of [Plaintiff’s] products would ever encounter but rather was a page prepared by [Plaintiff] as promotional material, designed for viewing by [Plaintiff’s] direct business-to-business customers…Thus, because [Plaintiff’s] mark was not shown as it is used in commerce,”…its use in the survey was improper and further detracts from the survey’s probative value. In addition, the pages of Cargo magazine were not sufficiently representative of [Defendant’s] product…Although the pages were taken from an actual issue of Cargo, a respondent, viewing the Cargo cover and interior page, would be highly likely to believe that Cargo was involved in the same line of business as the company that produced the [Plaintiff’s] “ads”, namely, providing wirelss or web-related products and services, when in fact Cargo devoted only a small percentage of its overall content to such products and services.

Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178, 1181-1182 (D. Kan. 2007)

Defendant does not contest [Plaintiff’s expert’s] qualifications or analysis of the survey data. Instead, defendant argues that the survey is unreliable, and thus, [Plaintiff’s expert’s] expert opinion does not rest on a reliable foundation and is irrelevant to the task at hand. Generally, public recognition surveys may be used to establish a likelihood of confusion…Technical and methodological deficiencies in a survey usually relate to the weight to be given to the survey, not its admissibility…But, when the “deficiencies are so substantial as to render the survey’s conclusions untrustworthy, a court should exclude the survey from evidence.”…Daubert underscores the trial court’s responsibility to ensure that survey evidence is both reliable and relevant…

* For the following reasons, the court finds that the survey was not conducted according to generally accepted survey principles. First, the survey universe is underinclusive. The survey participants are people who visited plaintiff’s promotional booth at one shooting tournament--the 2006 Grand American. Only people who attended the tournament and were already familiar with plaintiff or were interested in learning more about plaintiff’s products were surveyed. Second, the survey participants are not representative of the universe of prospective buyers because they were all familiar with plaintiff or in close proximity to plaintiff’s promotional

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material. Other members of the relevant universe are unrepresented. Third, the survey question is not clear or precise. The survey question, “Who makes these gunpowders?,” is confusing. It implies that the survey is asking about gunpowder manufacturers, but the “correct” answers include companies that only sell, not manufacture, gunpowder. The phrasing of the question could have skewed the results. Finally, the survey process was not objective. The survey was designed by plaintiff’s counsel. Nothing in the record suggests that plaintiff’s counsel has any experience with designing or conducting market surveys. Plaintiff’s employees conducted the survey while they were wearing shirts and hats with plaintiff’s logo. The survey was taken at plaintiff’s promotional booth, which had large signs with plaintiff’s logo and other promotional material on display. The participants were given free samples of plaintiff’s gunpowder and a chance to win eight pounds of gunpowder. Additionally, a biased method was used for the selection of participants--only people familiar with plaintiff were surveyed… After reviewing the record, the court finds that the…Survey is untrustworthy and inadmissible. Because [Plaintiff’s expert’s] expert opinions and report rely on the untrustworthy survey, they do not meet the standards of Federal Rule of Evidence 702 or Daubert and are inadmissible.

Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565, *13, *16, *26-*27 (N.D. Ga. 2007)

The plaintiffs object to the admissibility of [Defendant’s] survey on the basis that, inter alia, the “Thermos Survey” was the wrong survey methodology to use in concluding that the term “nite lights” was not generic…The plaintiffs’ contention is while it may be true that high usage of a term may show “genericness,” it does not follow that the lack of usage shows that the term is not generic…Because of this, the plaintiffs contend that the “Thermos Survey” is irrelevant to show non- genericness of the mark NITE LITES. The plaintiffs contend that [Defendant] should have employed a “Teflon Survey” model instead of the “Thermos Survey.”

* …The “Thermos Survey” has been repeatedly tested, and a potential error rate has been identified… The court is not persuaded that the use by [Defendant] of a “Thermos Survey” to conclude that a term is not generic is sufficiently beyond the standards practiced in the field of surveying so as to deem the survey unreliable…

*

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…The court finds that [Defendant’s] survey meets the criteria of helpfulness to the trier of fact given the specific allegations and contentions of this case.

Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681, *2-*5, *7, *10-*11, *13, *17-*19, *21-*22, *25-*29, *32, *52, *54-*55, *58 (E.D. Pa. 2007)

…[Plaintiff] moved to exclude surveys and related testimony from two of the [Defendant’s] expert witnesses, arguing that such evidence is inadmissible under Rule 702 of the Federal Rules of Evidence and pursuant to Daubert v. Merrell Dow Pharmaceuticals, Inc.…and its progeny…

… In Daubert, the Supreme Court imposed upon district courts the

role of a gatekeeper, in order to “ensure that any and all scientific evidence is not only relevant, but reliable.”…

… The first requirement, whether the witness is qualified as an expert,

has been interpreted liberally to encompass “a broad range of knowledge, skills, and training.”…

The second prong requires the expert’s testimony to be reliable…. The final prong requires that the expert testimony “fit” by assisting

the trier of fact… …

[Plaintiff] filed a Motion to Exclude the Survey[s] Conducted by [both of Defendant’s survey experts] and all Related Testimony and Opinions…In its motions, [Plaintiff] does not challenge [Defendant’s experts’] respective qualifications, experience or credentials. In general, [Plaintiff] argues that [Defendant’s second expert’s] survey fails the “reliability” prong and that [Defendant’s first expert’s] survey fails the “fit” and “reliability” prongs of the Daubert analysis.

The Federal Rules of Evidence “embody a strong and undeniable preference for admitting any evidence which has the potential for assisting the trier of fact.”…Rule 702 has a “liberal policy of admissibility.”…In a Lanham Act case, where the fact-finder must determine whether an advertising claim is deceptive or misleading, courts have recognized that it may be that “the success of a plaintiff’s false advertising claim will turn ‘on the persuasiveness of a consumer survey.’”…The Court of Appeals for the Third Circuit has held that the proponent of a consumer survey has the burden of establishing that it was conducted in accordance with accepted principles of survey research…

Courts in the Third Circuit have generally held that a survey’s “technical unreliability goes to the weight accorded a survey, not its admissibility”…Typically, a court will not exclude a survey unless it is so flawed that it would be completely unhelpful or harmful to the trier of fact…

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… [Defendant’s First Expert’s Survey]

[Plaintiff] does not contest [Defendant’s first expert’s] credentials or qualifications. Rather, [Plaintiff] argues that the survey…conducted is neither relevant nor reliable with respect to the issues presented in this case. Specifically, [Plaintiff] contends that [the] survey was not designed to determine, nor should it be used at trial to demonstrate, the issue of consumer’s “confusion” or “likelihood of confusion” when purchasing Splenda. [Plaintiff] argues that [Defendant] is seeking to use [the] survey for this very reason.

… [Defendant] presents several arguments that [Defendant’s first

expert’s] survey should be admitted. First, [Defendant] contends that the issue of “why people buy Splenda” is relevant to the issues in this case and [the] survey informs the jury on that question. Next, [Defendant] argues that [the] survey refutes the findings of…a survey commissioned by [Plaintiff]…[which] like [Defendant’s first expert’s], is not a “likelihood of confusion” survey. Rather, [Plaintiff’s] survey was designed to measure why consumers switched to Splenda, or why consumers chose Splenda over Equal…

[Plaintiff] also contends that [the] survey interviewed the wrong universe of people, namely, people who had purchased Splenda in the past, instead of prospective purchasers of Splenda. [The] survey was created to determine whether a “class” of Splenda consumers could proceed in a class action lawsuit. Understandably, as to a survey that was designed to test whether a category of consumers constitutes a “class” for purposes of filing a lawsuit against a maker of a certain product, the only permissible universe for such a class must consist of past users of that product. In Lanham Act cases that seek to prove rates of “confusion” among consumers, however, it is typical to survey prospective consumers….

… To the extent either survey is relevant, [the survey is probative

enough as rebuttal evidence to permit it to be introduced as evidence. Therefore, both [Plaintiff’s] Daubert motion and its motion in limine to exclude [the] survey will be denied.

… [Defendant’s Likelihood of Confusion Survey]

[Defendant’s second expert] designed and conducted her [likelihood of confusion] survey in response to a survey conducted by [Plaintiff’s] survey expert. [The] “goal” in designing her survey “was to demonstrate that a properly designed survey, without any of the methodological errors committed by [Plaintiff’s expert], would prove . . . that the vast majority of consumers are not misled by Splenda packaging.”…

…

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[Plaintiff] argues that the Court should exclude [Defendant’s second expert’s] survey and testimony because the survey is “so methodologically flawed and so poorly administered that it cannot possibly be relied upon.”…[Plaintiff] identifies the following alleged problems with [the] survey: (1) [Defendant’s second expert] improperly destroyed approximately 14 percent of the responses to her survey; (2) an insufficiently low percentage of survey responses were validated; (3) [Defendant’s second expert] provided insufficient oversight in conducting the survey and developing the results; and (4) the survey is unreliable because [Defendant’s second expert] adopted…an…“improper”…control [which] resulted in reducing the “confusion” percentage from approximately 26 percent to 8 percent, a difference of approximately 18 percent, to purportedly account for “noise.”

[Defendant] counters that [Plaintiff’s] criticism go to the weight of the evidence and not to its admissibility. [Defendant] argues that (1) the fact that some interviews were destroyed after [its expert] determined that they were invalid does not invalidate the survey; (2) approximately 40 percent of the responses were validated, which is customary; (3) [Defendant’s second expert] appropriately delegated; and (4)[Defendant’s second expert’s] choice of…a control was proper…[Defendant] argues that the choice of control goes to the weight of a survey and not to its admissibility…

The Court finds that, although [Defendant’s second expert’s] methods and oversight were far from perfect, as described by the parties in their papers, the survey is not so flawed as to render it inadmissible…

With respect to the validation issue, the Court does not doubt that validation is indeed important. However, [Defendant] argues that [its expert] validated over 40 percent of her interviews, and that this percentage exceeds the customary norms. [Plaintiff] cites no legal precedent for its assertion that a 50 percent validation rate is customary for litigation surveys; nor does it cite a single case where a court excluded a survey because of a subpar validation rate.

… [Plaintiff’s] objections to the technical validity of [Defendant’s

second expert’s] survey go to the weight to be accorded to the survey rather than to its admissibility. As such, [Plaintiff’s] Daubert motion to exclude [the] survey will be denied.

… In 1999, Kraft Foods [ a third party] conducted a series of 14 focus groups…[Defendant]…received portions of the results of the study in…2000…

… [Defendant argues that the Kraft survey should be excluded as double hearsay…[Plaintiff]…argues that the survey is admissible for non-hearsay purposes such as “notice” of consumer confusion.

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The Court notes that the results of a focus group are inherently different than the results of a survey. Whereas a survey is designed to collect data from an appropriate numerical sample of individual respondents, focus groups are designed to gather data from “groups” of people assembled together for that very purpose. As the Court of Appeals for the Fourth Circuit stated, “the very nature of a focus group seems, to some extent, to limit its ability to identify the message an advertisement conveys to an individual consumer.” Scotts Co. v. United Indus. Corp., 315 F.3d 264, 277 (4th Cir. 2002) (emphasis added). The court noted that:

Because the participants in a focus group freely voice their opinions, the opinion of a participant can be shaped by those of the others. Thus, a participant who may have derived no false message from an advertisement viewed outside the context of the focus group might well change his opinion about the message conveyed by the advertisement after considering the views expressed by the other participants.

… …because the Kraft presentation does not address the issues to be decided in this case, it is irrelevant…the Court finds that it is also unreliable, and will be excluded.

Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110, 1114-1115 (W.D. Wash. 2007)

Defendants have moved to exclude one of the surveys relied upon by Plaintiffs to show likelihood of confusion…Under Fed. R. Evid. 702, expert testimony is admissible if (1) the testimony is based upon sufficient facts or data, (2) the testimony is the product of reliable principles and methods, and (3) the witness has applied the principles and methods reliably to the facts of the case. Expert testimony is admissible if the expert is qualified to testify on the matters at issue and the testimony is relevant and reliable…Under Fed. R. Evid. 403, evidence may be excluded if its probative value is substantially outweighed by the danger of unfair prejudice, confusion of the issues, or misleading the jury. The Ninth Circuit has held that, in the context of consumer confusion surveys, “as long as they are conducted according to accepted principles, survey evidence should ordinarily be found sufficiently reliable under Daubert.”…

Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002, *23-*25 (S.D.N.Y. 2006)

…Accordingly, the survey should have provided respondents with all possible options to any question (including the options of “neither” or “don’t know”)…The reliability of the answers elicited by the closed-ended

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questions is undermined by the survey failure to inform respondents that they could also respond in this way…

… A survey’s control attempts to address in part the possible biasing effect of the questioning and a respondent’s prior beliefs…Rather than eliminating the questionable material from the ads…[Plaintiff’s expert] chose a prominent disclaimer at the beginning of the ads as its control…The disclaimer was suggestive and implanted responses to closed-ended question… In addition to these structural and design inadequacies, the [Plaintiff’s] surveys had serious data collection flaws… These flaws…are fatal to the admissibility of the consumer survey.

… …the physician survey lacked any control. [Plaintiff’s expert] maintained that a control group is unnecessary for sophisticated respondents like doctors, who are unlikely to “guess”…This is a marked departure from generally accepted market research practices… Second, the physician telephone survey suffered from the extensive and inappropriate probing…

… The sample size of the telephone physician survey involved only sixty-three respondents. [Plaintiff’s expert] said the primary reason for the small sample size was economic…This claim of economy is completely out of character with [Plaintiff’s] spending to beat [Defendant’s product] in the marketplace, to say nothing of the costs of this litigation. In any event, the sample size here is too small to be reliable… These reasons, plus others, are more than sufficient to determine that the physician survey results are inadmissible.

R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141,1154-1155 (D. Nev. 2006)

…Defendants argue that the survey is flawed, thus inadmissible under Rule 702 of the Federal Rules of Evidence…

… The court has considered the survey in light of Rule 702 and the factors outlined in Daubert and concludes that the survey is admissible…Defendants have provided no evidence to indicate an actual flaw exists in the methodology of the survey. Without evidentiary support, the court finds no merit in the arguments presented by Defendants…

Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454, *12-*13 (E.D. Mich. 2006)

…defects in [Plaintiff’s] survey lead this Court to conclude that the survey results are too unreliable to be admissible…“[a] survey also is not reliable if it suggests to the respondents an answer that would not

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otherwise have occurred to them.”…[The expert’s] surveyors asked respondents: “Which, if any, equipment brand that you see in this room do you believe is sponsored by, licensed by or associated with a particular fitness center, fitness club or fitness center chain?” This question clearly led respondents to find, not only a connection or association between the fitness equipment shown and some other product or service, but specifically a fitness center, club, or chain…

…the Court finds that any probative value of [Plaintiff’s] survey is substantially outweighed by the prejudice and confusion it will cause at trial…

Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist LEXIS 1378, *7, *10-*12, *17-*22 (W.D. Mich. 2006)

…nothing in either Daubert or the Federal Rules of Evidence requires a district court to admit opinion evidence that is connected to existing data only by the ipse dixit of the expert. A court may conclude that there is simply too great an analytical gap between the data and the opinion offered.”…

… Plaintiffs’ motions in limine rely on the declarations of plaintiffs’

expert…[Plaintiffs’ expert’s] opinions in her declarations are generally not supported by citation to authorities relied on by survey experts…[Plaintiffs’ expert] has not offered any survey results of her own in support of the opinions She expresses in her declarations. This is despite her claimed expertise in “the design and implementation of trademark, design patent, unfair competition, right of publicity, and other consumer surveys.”…She has designed and supervised the implementation of over 500 surveys, including over 150 trademark, design patent and unfair competition surveys…She has been retained as an expert witness for litigation regarding surveys over 150 times, and has “testified as an expert at trial in Federal Court in thirteen cases in which [she] had conducted surveys for trademark cases…”…Here, [Plaintiffs’ expert] was not retained by plaintiffs to conduct a survey, but only “to review and offer an opinion” regarding a survey conducted by defendants’ [first] expert...and “to review and offer [an] opinion” regarding a survey conducted by defendants’ [second] expert…Although plaintiffs’ approach of limiting their expert's assignment in this fashion is not unusual…the absence of competing survey evidence from [Plaintiffs’ expert] showing divergent survey results significantly undermines the efficacy of plaintiffs' arguments that defendants’ evidence is so unreliable that it must be excluded. In other words, plaintiffs’ criticisms of the methodology used by the defense experts would have been substantially aided by proof that the “correct” methodology would have led to a different result.

… Plaintiffs’ expert…characterizes the universe [Defendant’s first expert]

selected and his sampling from it as “questionable.”…In somewhat hyperbolic terms, plaintiffs’ brief transforms “questionable” into an argument that [Defendant’s first expert’s] universe was “fatally flawed” and “hopelessly broad”

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and compounded by his “improper sampling.”…Plaintiffs’ expert believes that the two-year periods selected by [Defendant’s first expert] were too long. She believes that, “A more recent past time frame such as three months would have been more appropriate…”…None of [Plaintiffs’ expert’s]criticisms is supported by reference to written authority in the area of survey research or objective evidence.

[Plaintiffs’ expert] also suggests additional screening questions that she believes [Defendant’s first expert] should have asked. [Plaintiffs’ expert] believes that questions should have been added to determine if the potential respondents were serious shoppers for laundry equipment such as, “had they looked at advertising for laundry equipment or had they actually shopped for laundry equipment.”…She criticizes [Defendant’s first expert] for not including screening questions about price points…She believes that screening questions should have been asked “about whether potential respondents had previously purchased higher priced, higher quality home appliances such as KitchenAid or were ‘home enthusiasts’ who spend time and effort on creating the perfect home.”…She states without any supporting evidence that, “These are the types of consumers who would be more likely to be knowledgeable about KitchenAid’s Whisper Quiet mark because this is the type of equipment they purchase.”…Again, her opinions are devoid of reference to supporting authorities…[Plaintiffs’ expert] did not conduct any survey demonstrating that her suggested modifications to [Defendant’s first expert’s] survey would produce different or more accurate results. In essence, she is claiming that shecould have conducted a more accurate survey but did not do so…

… [Plaintiffs’ expert] states that interviewers provided respondents with a

“poor quality” photo of an LG washer or dryer…[Plaintiffs’ expert] provides no explanation how these purported deficiencies render [Defendant’s first expert’s] survey unreliable.

…[Defendant’s first expert’s] survey had the interviewer point to the bottom line of a photograph, where it said “Whisper Quiet”…The respondent was then asked, “Now, looking at this picture of just the side of the control panel, if you were in a store shopping for an appliance and you saw this washer [dryer] with the words, “Whisper Quiet…on it, would this tell you anything about the washer [dryer].”…[Plaintiffs’ expert] states, that “there was no reason to preface ‘Whisper Quiet’ with ‘the words,’ or with anything at all.”…She states that, “This proves that the respondents could hear, see, read, and ultimately come to a conclusion about what ‘Whisper Quiet’ means because it includes the word quiet.”…[Plaintiffs’ expert’s] criticisms are captious and unpersuasive. If [Plaintiffs’ expert] had conducted a similar survey omitting the purportedly offending phrase “the words,” and achieved significantly different results, her criticism might be more persuasive. As it is, there is no evidence that if the challenged phrase had been omitted that the survey results would have been any different.

…[Defendant’s first expert’s] survey asked, “Do you believe that a washer [dryer] that uses these words, ‘Whisper Quiet…’…comes from, is associated

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with, or is put out by one company only? or More than one company?” [Plaintiffs’ expert] again objects to “these words” appearing in [Defendant’s first expert’s] question…[Plaintiffs’ expert] states that she finds the question to be confusing. She states that asking this question with the LG brand name on the depicted washer or dryer panel is not accepted survey methodology and that in a secondary meaning survey, the mark must be shown on the product with all brand names (indicia of origin) redacted…There is no legal or professional survey authority cited for these propositions…

Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541, *21-*23 (E.D.N.Y. 2005)

In sum, the Court finds that the survey conducted by [Plaintiff’s expert] is flawed to the point that its probative value is substantially outweighed by the survey’s potential for unfair prejudice and confusion…Because it is axiomatic that inadmissible information cannot defeat a well-grounded motion for summary judgment, Plaintiff’s reliance on [the survey of its expert] is misplaced…

M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073, 1087 (9th Cir. 2005)

Admissibility of a survey is a threshold question that must be resolved by a judge…(“Treatment of surveys is a two-step process. First, is the survey admissible? That is, is there a proper foundation for admissibility, and is it relevant and conducted according to accepted principles? This threshold question may be determined by the judge.”…) Surveys in trademark cases are to be admitted as long as they are “conducted according to accepted principles.”…

[Plaintiff’s] survey was twice excluded by the district court because it was not created or conducted in a manner that complied with appropriate standards…

Both district judges properly rejected the [Plaintiff’s] survey because the survey’s creator “did not qualify as an expert on designing or analyzing consumer surveys.” Moreover, [Plaintiff] failed to “show that the survey was conducted in accordance with generally accepted survey principles…”…[Plaintiff’s] arguments regarding the weight of the survey are misplaced because [Plaintiff] first failed to provide a proper foundation for admissibility of its survey…(“Once the survey is admitted, however, follow-on issues of methodology, survey design, reliability, the experience and reputation of the expert, critique of conclusions, and the like go to the weight of the survey rather than its admissibility.”)…

The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251, 261 n.4 (D. R.I. 2005)

n4 [Defendant] retained the services of [a survey expert] to determine whether there was a likelihood of confusion between [Defendant] and [Plaintiff] among [Defendant’s] agents in Rhode Island who produce commercial insurance policies. [Defendant] seeks to have the testimony…admitted as expert testimony

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to the effect that the results of the survey…conducted demonstrate a lack of likelihood of confusion among [Defendant’s] agents…[Plaintiff] filed a motion to exclude this testimony and the Court conducted a Daubert hearing in the course of the trial… This Court grants [Plaintiff’s] motion for the following reasons: First, the Court does not need an expert to testify to the non-startling conclusion that [Defendant’s] agents…are not confused between [Defendant] and [Plaintiff]…Second, [Defendant’s expert’s] methodology raises a number of questions as to the reliability of her conclusions…

Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist. LEXIS 23691, *7-*8, *11-*14, *16-*17 (N.D. Tex. 2004)

In Daubert v. Merrell…“the Supreme Court held that when expert testimony is offered, the trial judge must perform a screening function to ensure that the expert’s opinion is reliable and relevant to the facts at issue in the case.”… Federal Rule of Evidence 702 provides the standard for admissibility of expert testimony in federal court…

… “The requirement that the testimony assist the trier of fact means the evidence must be relevant.”…“The expert testimony must be relevant, not simply in the sense that all testimony must be relevant...but also in the sense that the expert’s proposed opinion would assist the trier of fact to understand or determine a fact in issue.”…Simply put, to be relevant there must be a valid connection between the expert testimony and the issue(s) in controversy…

… The final inquiry in determining the admissibility…is the reliability of the testimony…In analyzing the reliability of an expert’s testimony, the Supreme Court in Daubert provided an “illustrative list of factors that may aid a court in evaluating reliability:”…The Daubert factors are flexible and they “may or may not be pertinent in assessing reliability, depending on the nature of the issue, the expert’s particular expertise, and the subject of his testimony.”…

… … An analysis under Daubert and its progeny is not intended to replace the adversary system…In its role as gatekeeper, the court should not determine the merits of the case, but instead determine whether the evidence at issue is admissible… “A review of the caselaw after Daubert shows that the rejection of expert testimony is the exception rather than the rule.” FED. R. EVID. 702, Advisory Committee Notes to 2000 Amendments. The [Defendant’s expert’s] Report appears to meet the standard for admissibility under Rule 702 and thus the court will consider it in determining [Defendant’s] motion for summary judgment…

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Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS 18999, *26-*27 (3d Cir. 2004)

[Defendant’s] argument that any problems of [Defendant’s expert’s] survey should have affected only its evidentiary weight but not its admissibility is also unpersuasive. The District Court excluded the survey because [Defendant’s expert’s] methodology was fundamentally flawed and because the danger of undue prejudice far outweighed the limited probative value of the survey, especially for a jury. The courts have held generally that mere technical unreliability goes to the weight accorded a survey, not its admissibility…The Court in this case concluded that [Defendant’s expert’s] survey did not suffer from mere technical flaws, but from fatal flaws.

Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist LEXIS 17766, *8-*10 (D. Minn. 2004)

Subject to proper foundation being laid, and in light of the Federal Rules of Evidence and Daubert, the Court finds that [Plaintiff’s expert] is a qualified survey expert. [Plaintiff’s expert] is a trained social scientist with 20 years of experience in the marketing communications industry. [Plaintiff’s expert] serves as president of [his company] where he designs, administers, and analyzes market research for companies. In addition, [Plaintiff’s expert] has experience providing testimony at trials and depositions in this district.

… While the Court does not accept the [Defendant’s] invitation to reject

[Plaintiff’s Expert’s] consumer survey, the Court does not agree with all aspects of the methodology of the survey or the interpretation given to the survey results by [Plaintiff’s expert]. In particular, the Court finds that the format of the questions, if not leading, certainly suggested to the respondents the “correct” answer to some of the questions being asked. The Court also finds that some of the questions asked had little probative value...In light of these findings, the Court will give the survey results and their interpretation less weight when considering the issues before it on the motions for summary judgment.

Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477, 488 (5th Cir. 2004)

Usually, methodological flaws in a survey bear on the weight the survey should receive, not the survey’s admissibility…[Plaintiff] argues that its presentation of survey evidence precludes summary judgment because a court may not weigh evidence or make credibility determinations when reviewing a motion for summary judgment…In some cases, however, serious flaws in a survey will make any reliance on that survey unreasonable…Otherwise, any survey, no matter how tendentious, would force the parties to trial. Thus, although minor methodological flaws will affect weight rather than admissibility, a survey can be “so badly flawed that it cannot be used to demonstrate the existence of a question of fact on the likelihood of consumer confusion.”…

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No reasonable jury could view the proffered survey as evidence of confusion among relevant consumers…

McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733, *35-*37 (D. Puerto Rico 2004)

…It is true, of course, that the Supreme Court’s holdings in Daubert v. Merrell Dow Pharms.…which require that certain standards be met before expert scientific testimony can be accepted and relied upon by a tribunal, apply to survey research as well as other types of expert testimony. But in general, courts are loathe to exclude consumer surveys from evidence. “The majority rule is that while technical deficiencies can reduce a survey’s weight, they will not prevent the survey from being admitted into evidence.”…So long as the survey is conducted according to accepted principles, “survey evidence should ordinarily be found sufficiently reliable under Daubert.”…(“Technical and methodological deficiencies in the survey…bear on the weight of the evidence, not the survey’s admissibility.”)…(flaws in surveys go to the weight the trier of fact should place on the survey’s results)…(survey will rarely be so flawed as to be completely unhelpful to the trier of fact and therefore inadmissible)…(“Even if the court finds deficiencies in the proponent’s showing” that the population was properly chosen and defined, that the sample was representative of that population, that the data was accurately reported and properly analyzed, “the court may receive the evidence subject to argument going to its weight and probative value.”)…

MasterCard Int’l Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485, *27-*30 (S.D.N.Y. 2004)

The Survey conducted by [Defendant’s expert] is flawed to the point that its probative value is substantially outweighed by the Survey’s potential for unfair prejudice and confusion, and the likelihood that it will mislead the jury… …the number of respondents surveyed is too small to provide meaningful results in this instance…just 27 individuals [in] the test cell…and 25 individuals [in] the control group… … It is unclear whether, and to what extent, the Survey reached the decision-makers whose potential confusion is relevant to this litigation.

In addition, bank employees deciding which smart card programs are appropriate for their institutions will do so with far more information than was provided in the Survey and with far more care than the Survey’s respondents… …The Survey is excluded pursuant to Rules 403 and 702 of the Federal Rules of Evidence.

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Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550, *2 n.1 (S.D.N.Y. 2004)

n1 Defendant…submitted a motion in limine to exclude all evidence relating to the purported consumer survey conducted by [Plaintiff’s expert], including his expert report and related testimony…Defendant argues that Plaintiff's consumer survey should be excluded under Rule 403 of the Federal Rules Evidence because it is so flawed in methodology that any probative value the survey may have is substantially outweighed by its prejudicial effect…The Court has considered Defendant’s arguments regarding the alleged flaws in the [Plaintiff’s expert’s] survey in its determination of the summary judgment motions. However, the Court will not at this time address whether or not [Plaintiff’s expert’s] report and related testimony concerning the survey results should be excluded at trial. Regardless, if any errors are present in the methodology used in conducting this survey, such errors generally go to the weight of the evidence, not its admissibility…

Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1026-1027 (9th Cir. 2004)

Defendants criticize [Plaintiff’s expert’s] procedures and conclusions… Their critique of [Plaintiff’s expert] methods and interpretations formed the basis of a motion to exclude his expert testimony and report before the district court. The district court denied that motion, however, and allowed the introduction of the evidence.

Defendants may have valid criticism of [Plaintiff’s expert’s] methods and conclusions, and their critique may justify reducing the weight eventually afforded [Plaintiff’s expert’s] expert report… Because actual confusion is at the heart of the likelihood of confusion analysis…[Plaintiff’s expert’s] report alone probably precludes summary judgment.

Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734, 765 (E.D. Mich. 2003)

Under Daubert v. Merrell Dow Pharmaceuticals…the Court must ensure that expert testimony “is not only relevant, but reliable.”…[Plaintiff’s expert] failed to satisfy fundamental principles of survey research in seven major ways:

(a) The surveys did not sample the appropriate universe of respondents; (b) The surveys did not use any demonstrative stimuli or otherwise replicate actual market conditions; (c) The survey questionnaires were biased and leading; (d) [Plaintiff’s expert] drew unwarranted inferences and failed to take into account obvious alternative explanations; (e) The surveys did not ask the kind of control questions needed to generate an error rate; (f) The surveys were not administered properly, including the use of a panel of regular survey respondents;

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(g) The surveys did not employ a design that established causation, rendering the surveys results uninterpretable…

Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933, *28-*29 (D. R.I. 2003)

While every survey, including the one at issue here, may contain some flaws, this Court sees no reason to ignore the survey at the summary judgment stage. Instead, the alleged infirmities can be examined in a motion to exclude or at trial by “vigorous cross-examination [and] presentation of contrary evidence.” …Daubert v. Merrell Dow Pharms., Inc….see also McCarthy § 32:170, at 32-274-275 (“The majority rule is that while technical deficiencies can reduce a survey’s weight, they will not prevent the survey from being admitted into evidence.”); Callmann § 19.27.50, at 244 (noting that the “methodological deficiencies which result from failing to follow [the framework for such surveys]…usually go to the probative weight which the survey is accorded, not to its admissibility.”)…

Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369, *16-*17 (N.D. Ill. 2003)

Defendants move to bar any reference to the consumer survey…claim[ing] that [Plaintiff’s] survey must be excluded because he failed to: (1) differentiate functional from non-functional product features; and (2) take into account the effect of the expired patents. Defendant’s objections go to the weight of the evidence, but do not necessarily preclude admissibility.

First, Defendants claim that “[a] survey which asks consumers to identify the source of a product based on its overall configuration when most of the product’s configuration is functional is utterly worthless in determining whether certain features have acquired secondary meaning.”…In making this argument, Defendants’ argument assumes the overall configuration of [Plaintiff’s] chair is entirely functional, in contrast with the opposing assumption made by [Plaintiff’s expert]…[Plaintiff’s expert’s] reliance on [Plaintiff’s] assertion of non-functionality may be explored on cross-examination…

Second, Defendants’ argue that “it is highly probable that the connection between the product design and [Plaintiff] comes from the patents.”…This argument goes to the necessity of establishing a sufficient foundation for the admission of the survey. Accordingly, Defendants’ second motion in limine must be denied.

J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040, *17, *22-*23 (D. N.J. 2003)

This Court finds that Plaintiff’s initial filing of this action was justified and was not exceptional, but also finds that its continued pursuit of the action after it was aware that [Plaintiff’s] survey lent no credence to its position, in light

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of the Court’s clear guidance in the preliminary injunction opinion upon principles of well-settled law, made the case exceptional.

… Plaintiff should have been aware after the deposition testimony of

[Plaintiff’s expert] was taken that its case was meritless. The flaws in [Plaintiff’s expert’s] survey were patent on its face; the very definitions on which it was based were clearly legally incorrect in light of this Court’s preliminary injunction opinion…

Instead of acknowledging the flaws in their case, Plaintiff pressed forward and required Defendants to file, brief, and argue their summary judgment motion…This Court finds that after [Plaintiff’s expert’s] deposition testimony was taken…Plaintiff should have reconsidered its position and determined that it was unable to present the evidence that the Court determined was necessary to show that their case had merit. Therefore, this Court finds that Plaintiff’s case became an “exceptional case” the following day…and finds that Defendants may seek reasonable fees for the period from [that date] forward.

Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159, *38 (C.D. Cal. 2003)

…Here, the survey did not sample the correct group, and did not permit those sampled to view all of the relevant evidence bearing on the relevant issue. Moreover, the survey’s conclusion - that a reasonable consumer might believe that Plaintiff and Defendant are associated - does not meet the correct standard of whether reasonable consumers were likely to intimate an association. For all of these reasons, the Court concludes that the survey is not admissible.

Citizens Financial Group, Inc. v. The Citizens Nat’l Bank of Evans City, 2003 U.S. Dist. LEXIS 25977, *7, *9-*11, *13-*15 (W.D. Pa. 2003)

Pursuant to Daubert, [Plaintiff] seeks to exclude [Defendant’s] likelihood of confusion survey… …[Plaintiff’s] main objection is that the study is conducted in an improper universe and,…when conducting a survey in a trademark case the first crucial step is determining the proper universe…the propriety of a survey can turn on the geographical area covered…The burden of proving that the universe is proper is on the proponent of the survey… In reverse confusion cases, like this one, the appropriate universe is the “senior user’s customer base.”… …While it is true that the appropriate universe consists of individuals who have access to both litigants and are a customer or a potential customer, when conducting a survey in a reverse confusion case, the universe is further limited to the senior user’s “customer base.”…

… Even assuming, arguendo, that the study was conducted in the proper

universe, the survey would have necessarily excluded those individuals that were

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likely to be customers or potential customers of [Senior User]. As mentioned previously,…relevant factors used to assess reliability and trustworthiness of a survey are whether the sample chosen was representative of that universe and whether the questions asked of the interviewees were framed in a clear, precise and nonleading manner…Here, screener question A asked the following question: “But first, do you live or work in this general area or are you just visiting?” …“General area” and “just visiting” were not defined by the study. This is not a clear and precise question. Furthermore, if the individual answered “just visiting,” then the interview was terminated without any further questioning and the individual was excluded from the questionnaire…many of the individuals that should have been included in the proper universe…would have been automatically excluded from the survey. Therefore, because of the location of the study and the screener question asked, few (if any) participants were likely to be part of [Senior User’s] customer base. Consequently, the failure to conduct the survey within [Senior User’s] customer base and then to exclude those individuals who may potentially come from within the customer base is fatal.

…Although I recognize that no survey is beyond criticism and there is no perfect survey, the problems with the [Senior User’s] Survey are so fundamental and basic that the survey is stripped of any significant probative value. Therefore, I am convinced that the…survey is not simply [well]-tailored (so as to go to the weight), but is fatally flawed due to an irrelevant and improper universe, such that it must be excluded from evidence at trial.

The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221, 221 (D. R.I. 2003)

The Supreme Court’s ex cathedra pronouncements in Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 113 S. Ct. 2786, 125 L. Ed. 2d 469 (1993) and Kumho Tire Co. v. Carmichael, 526 U.S. 137, 119 S. Ct. 1167, 143 L. Ed. 2d 238 (1999) offer district courts guidance in assessing the admissibility of expert testimony. Under Daubert, the district court undertakes a “gate-keeping” function, and determines “whether the reasoning or methodology underlying the testimony is scientifically valid and . . . whether that reasoning or methodology properly can be applied to the facts in issue.”…

In Kumho Tire, the Supreme Court held that the gate-keeping function applies to technical and other specialized knowledge in addition to scientific testimony…The court stressed that the district court must have “considerable leeway” in both “how to determine reliability” and “its ultimate conclusion.”…Most importantly for the instant motion, “the ultimate credibility determination and the testimony’s accorded weight are in the jury’s province.”…“Vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.” Daubert, 509 U.S. at 596.

… It is true that the admissibility of market surveys as evidence in trademark

cases is a thorny question…

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Courts have stated many reasons for excluding survey evidence due to fatal flaws in methodology of design or implementation…

Likewise, surveys have been upheld and accepted by courts, notwithstanding attacks on their methodology…

All this serves to show that the decision whether to admit [Plaintiff’s] survey evidence ultimately rests in the Court’s discretion. Bearing in mind the Daubert/Kumho analytical scheme…Defendant[’s]…criticisms, valid as they may be, are not sufficiently weighty to justify exclusion of the survey altogether under the applicable gate-keeper standard. The alleged infirmities [Defendant] identifies are best challenged by the type of “vigorous cross-examination (and) presentation of contrary evidence” envisioned by Daubert…

Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100, *12-*13 (N.D. Cal. 2003)

Plaintiffs’ moving papers did not offer any evidence of actual confusion; indeed, Plaintiffs conceded that they did not have any such evidence. In connection with their reply, however, they submitted a survey of 200 professional mortgage brokers which they claim demonstrates initial interest confusion. This new evidence is stricken. Plaintiffs have offered no justification for their failure to submit their survey evidence in connection with their initial moving papers…

In any event, even if the Court were to consider the untimely evidence, Plaintiffs’ survey has several substantive flaws. First, the survey did not target Defendants’ market (homeowners) and therefore is not a representative sample.

Second, the individual who conducted Plaintiffs’ survey opines that the brokers polled will be confused that World Lending Group is connected with World Savings. The survey, however, makes no specific reference to Defendants’ marks; rather, it asks the respondents generically if they have a belief about a website owner who uses the term “world” among other terms. The survey’s failure to refer to Defendants’ marks makes it insufficient to establish any actual initial confusion.

Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951, *3-*5, *8-*11 (N.D. Ill. 2003)

Consumer survey results must be presented through experts. Under Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 125 L. Ed. 2d 469, 113 S. Ct. 2786 (1993), the court must act as a “gatekeeper” to ensure that expert testimony satisfies the admissibility requirements of Federal Rule of Evidence 702. Daubert requires the court to ensure that expert testimony is “not only relevant, but reliable.”…

Moreover, Rule 403 requires us to consider the probative value of a survey in relation to circumstances such as the danger of unfair prejudice, confusion of the issues, misleading the jury, or waste of time. Methodological deficiencies often go to the weight rather than to the admissibility of a survey, but if the flaws are sufficiently serious, “the court may find that the probative value of the survey

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is substantially outweighed by the prejudice, waste of time, and confusion it will cause at trial.”…

[Defendant] contends that [Plaintiff’s] survey…is so flawed that we should exclude it from evidence. [Defendant] first argues that the survey conditions failed to replicate actual marketplace conditions, in two ways: first, respondents were exposed to only 8- or 9-second portions of the parties’ 30-second television commercials and 10-second radio advertisements…and second, the ads were shown consecutively, making the survey little more than a word association test.

We agree with [Defendant] that the survey distorted marketplace conditions by taking the advertisements out of context…

… Another major flaw of the [Plaintiff’s] survey is that it failed to ask

respondents a very important question--namely, a follow-up…question …McCarthy discusses the rationale for the necessity of this follow-up

question as follows: (Questions eliciting responses regarding both source confusion and confusion as to sponsorship, affiliation and connection) should be followed up by the importation question: ‘Why do you say that?’ Often, an examination of the respondents’ verbatim responses to the ‘why’ question are the most illuminating and probative part of a survey, for they provide a window into consumer thought processes in a way that mere statistical data cannot.

… The [Plaintiff’s] survey improperly distorted marketplace conditions by

lifting portions of the commercials out of context; it contained a highly leading question; and it failed to ask respondents a crucial state-of-mind question regarding perceived association. It did not accurately gauge likelihood of confusion and thus fails to meet the standards set forth in Daubert. The [Plaintiff’s] survey is also excluded under Rule 403 because the results are likely to create unfair prejudice, confuse the issues, waste time, and, most importantly, mislead the jury.

For the foregoing reasons, Defendant[’s] motion in limine to exclude the survey and expert testimony of [Plaintiff’s expert] is granted.

Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO, 2-6 (N.D. Ga. 2002)

…[Defendant’s expert] has not conducted a survey on this issue… Defendants wish to use [their expert’s] testimony to attack the credibility and reliability of the [Plaintiff’s] survey.

… The Supreme Court has imposed a “special gatekeeping role on the trial judge in Daubert to ensure that scientific evidence is both reliable and relevant before being admitted as evidence.”…This gatekeeping role was extended in Kumho Tire Co., Ltd. v. Carmichael to apply to all expert testimony, not solely scientific testimony…This gatekeeping role, however, is not intended to supplant the adversary system or the jury’s role: “[v]igorous cross-examination,

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presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence.”…

… The determination of likelihood of confusion is a question of fact…The issue of which standards should be considered when evaluating the reliability of survey evidence is a matter of law… Because the characteristics of reliable survey evidence are dictated as a matter of law as set forth in the parties requests to charge on this issue, the testimony of [Defendant’s expert] is not likely to assist the trier of fact…[Defendant’s expert’s] testimony consists solely of criticisms of the survey’s alleged defects, which are capable of being brought out through cross-examination. In addition, the court will instruct the jury with regard to the standards it should consider in determining the weight the jury decides to give to [Plaintiff’s] survey. It is then up to the jury to decide whether the survey was conducted in accordance with those standards and if not, what effect, if any, this failure would have on reliability of the survey results. Permitting [Defendant’s expert’s] testimony would allow him to testify to the legal issue of the standards that should be considered in evaluating the survey evidence, which is for the court to determine. Permitting his testimony would also allow him to testify as to the credibility and reliability of [Plaintiff’s] survey, which is for the jury to decide…

Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457, 459-461 (S.D.N.Y. 2002)

…The Second Circuit in Schering made clear that such a survey’s “errors in methodology…properly go only to the weight of the evidence” -- not to its admissibility…

The only other potential limitation on the survey’s admissibility is Fed. R. Evid. 403’s provision that a court may exclude otherwise relevant evidence on the ground that the probative value of the evidence is substantially outweighed by the danger of such matters as unfair prejudice or jury confusion…Thus, a survey should be excluded where it is so flawed in methodology that its probative value is substantially outweighed by its prejudicial effect…In order to determine a survey’s “probative” value under Rule 403, however, it would seem that at least some attention must still be paid to the methodology of the survey because a court determines whether a survey is probative under Rule 403 by examining whether it was “fairly prepared and its results directed to the relevant issues.”…

Thus, in considering the probative value of a survey, it is tempting to look to longstanding case law that provides a detailed framework for evaluating a survey’s trustworthiness…(under a Rule 403 analysis, a court must conduct a detailed examination of the trustworthiness of survey evidence)…An in-depth analysis of trustworthiness, however, is contrary to the admonition in Schering that “methodological” errors in a survey based on the present sense impressions of the respondents bear exclusively on the weight to be given the survey rather than

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bearing on an admissibility determination under Fed. R. Evid. 403. It is perhaps for this reason that where Rule 403 alone is at issue, courts have typically not performed an extensive analysis of the survey…Instead courts have focused on whether the survey is so far out of the realm of relevance that a jury should not even be permitted to consider it. Thus in Cache [2001 U.S. Dist. LEXIS 226], the court admitted a survey because, despite its “flaws,” it did not “appear to be devoid of all probative value on the issue of the likelihood of confusion.” …Obviously, with the application of this relaxed standard, many surveys that might be accorded little weight after an analysis of their methodology would still pass muster under Rule 403. Indeed, the Seventh Circuit has noted that “while there will be occasions when the proffered survey is so flawed as to be completely unhelpful to the trier of fact and therefore inadmissible, such situations will be rare.”…

In the present case, the flaws proffered by [Defendant] are not so obvious and egregious that the Court can conclude that the probative value of the survey (even if it could be characterized as minimal) is outweighed by its prejudicial effect…

J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358, 367-372 (D. N.J. 2002)

The Court must thus determine as a threshold issue whether [Plaintiff’s expert’s] opinion and report are admissible…the issue here is whether [Plaintiff’s expert’s] survey design and execution are sufficiently reliable and appropriate to the facts in this case so that his resulting opinion is admissible under Rule 702 of the Federal Rules of Evidence…This threshold determination of the admissibility of proposed expert testimony is governed by the principles of Daubert v. Merrill Dow Pharm., Inc….

… This Court recognizes that methodological deficiencies in a survey

generally relate to the weight given the survey’s conclusions rather than to its admissibility…

… In this case, the [Plaintiff’s] survey suffers from two substantial flaws that

show that it is not trustworthy and is not admissible. The first, and perhaps clearest, flaw is the uncontroverted definitional problems of the survey…

… The second flaw in the survey is that the universe chosen for the survey

was improper… …

…this Court finds that [Plaintiff’s] survey suffers from substantial flaws, it is unreliable and inadmissible under Rule 702, Federal Rules of Evidence…

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Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP and NHL Enterprises, LP, 2002 U.S. Dist. LEXIS 13991, *6-*8 (D. Minn. 2002)

Defendants oppose admitting the…survey of [Plaintiff], claiming that the

survey is seriously flawed, would not be helpful to the trier of fact, and would violate the spirit of Daubert v. Merrell Dow Pharmaceuticals…Defendants point to many alleged flaws in the study, arguing that the composition of the sample, the tone and content of the questions, and the method of tabulation all favor [Plaintiff]. Defendants cite numerous cases in which courts have excluded surveys due to errors similar to those that allegedly plague [Plaintiff’s] report…

… Defendants make several allegations about [Plaintiff’s expert’s] survey,

which, if true, would seriously undermine his credibility. [Plaintiff] likewise offers explanations which, if true, would demonstrate that some deficiencies are inevitable, while other alleged deficiencies are in fact strengths. The relative merits of each argument can be borne out on cross-examination, with credibility determinations and weighing of the evidence left to the trier of fact. See generally J. Thomas McCarthy, 5 McCarthy on Trademarks § 32:178 (4th ed.)(“The proper approach is to view (survey) evidence with some understanding of the difficulty of devising and running a survey and to use any technical defects only to lessen evidentiary weight, not to reject the results out-of-hand.”) Therefore, the Court will deny Defendants’ motion to exclude [Plaintiff’s expert’s] testimony.

Trouble v. The Wet Seal, Inc., 179 F. Supp. 2d 291, 300-303 (S.D.N.Y. 2001)

[Defendant] asserts that the testimony of [Plaintiff’s] expert…is unreliable and should be excluded under Federal Rule of Evidence 702 and the principles contained in Daubert…

… In assessing the reliability of a proffered expert’s testimony, a district

court’s inquiry under Daubert must focus, not on the substance of the expert’s conclusions, but on whether those conclusions were generated by a reliable methodology…

The test of reliability, however, is a “flexible” one, and the factors set forth in Daubert do not constitute a “definitive checklist or test.”… a “review of the case law after Daubert shows that the rejection of expert testimony is the exception rather than the rule.” Advisory Committee Notes, 2000 Amendments, Fed. R. Evid. 702.

… In his…report [Plaintiff’s expert] wrote that, “it is very evident that there

is a vast amount of confusion between [the] brands…To reach this conclusion, [Plaintiff’s expert] visited several of the parties’ stores, looked at their products, and reviewed [Plaintiff’s] confusion logs...Reviewing the “Background and Qualifications” section of his report, it appears that [Plaintiff’s expert] has neither experience assessing the likelihood of confusion between names and marks nor other experience that would qualify [Plaintiff’s expert] as an expert on this issue.

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Without such experience, [Plaintiff’s expert’s] opinion on confusion is merely conjectural.

Furthermore, it is hard to determine what methodology, if any, [Plaintiff’s expert] used to reach his conclusion...

The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp.2d 785, 788, 789, 791, 792 (D. Md. 2001)

It is well established that a district court must act as the “gatekeeper” for expert witness testimony in a jury trial…The instant motion relates to survey evidence which is intrinsically different from the types of evidence most frequently encountered in a Daubert or Kumho context. As stated by Professor McCarthy: One must keep in mind that there is no such thing as a “perfect” survey…

… Nevertheless, it is, and has been even before Daubert, necessary for a district court to pass upon the threshold question of the validity of a survey before submitting the results to a jury for their consideration…

… The Court finds that the survey was severely defective by virtue of its failure to ask any question that would test the critical question of what website it is that the subject thought they had seen.

… …Motion to Exclude…Granted.

Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp. 2d 1177, 1197 n.32 (C.D. Cal. 2001)

n.32…Defendants objected to…the Survey based on hearsay, failure to authenticate, and lack of reliability…

…Defendants informed the Court that Plaintiffs had refused to produce the videotape used to conduct the Survey. Plaintiffs confirmed their refusal to produce it, and they offered the Court no explanation for their refusal. Because Plaintiffs have not provided the videotape at issue in the Survey, thus depriving Defendants of another basis upon which to meaningfully oppose it, the Court in its discretion declines to consider the Survey…

Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp.2d 1033, 1039-1041, 1043, 1045, 1051, 1052 (S.D. Ind. 2000)

No survey is beyond criticism, especially in the context of litigation. Courts therefore recognize that many criticisms of surveys used in litigation are appropriate topics of cross-examination and contrary evidence to reduce the weight of the survey without requiring that the [sic] it be excluded…

There are limits, however. The court need not and should not respond reflexively to every criticism by saying it merely “goes to the weight”…

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[Plaintiff’s] motion in limine…asks the court to perform before trial a variation of the gatekeeping function the court must perform for expert testimony under Daubert v. Merrell Dow Pharmaceuticals, Inc.…Consumer survey results must be presented through expert witnesses. Under Daubert, the gatekeeping function requires the court to ensure that expert testimony “is not only relevant, but reliable.” Kumho Tire Co. v. Carmichael…The court’s responsibility is to ensure that an expert “employs in the courtroom the same level of intellectual rigor that characterizes the practice of an expert in the relevant field.”…

…The gatekeeping inquiry must be “‘tied to the facts’” of a particular case…

… The question here under Rule 702 is whether the results of [Plaintiff’s]

proposed surveys will be sufficiently reliable to use in court and whether they are likely to assist the trier of fact decide an issue in the case…

[Plaintiff] proposes to conduct…three separate survey[s]… …

The court considers [the] first…survey and then turns to the [other] surveys…

… [Plaintiff’s] proposed…survey suffers from three serious flaws: (a) it

grossly distorts the “marketplace conditions” in which Internet users might actually encounter the two parties’ marks together; (b) it fails to use the most basic control…(c) it is designed to create “demand effects” that will appear to exaggerate unfairly any possible confusion…

… …They [survey defects] make the proposed survey nothing more than a

meaningless memory game or word association exercise that bears no relationship to the marketplace.

… …By failing to use…controls, [Plaintiff’s] proposed survey amounts to

little more than a meaningless word association or memory exercise. …

The [other] surveys suffer from two fundamental and related flaws. First, they are obviously highly suggestive and leading. In fact, they are so suggestive and leading that it is astonishing [Plaintiff] is even proposing them…

[The] survey formats therefore test nothing more than the memory and common sense of a respondent…

Second, the…surveys also fail to include any meaningful controls… …

…The results of the surveys, therefore, would have little or no probative value on the questions relevant to the case, and they will be excluded under Rule 702 and the principles of Daubert and Kumho Tire. In addition, the results are likely to create unfair prejudice, confuse the issues, waste time, and mislead the jury. The court will also exclude them under Rule 403…

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Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335, 1336, 1338-1339 (E.D.N.Y. 2000)

In order to determine the admissibility of expert witness testimony, the Supreme Court has set forth a two-prong relevance/reliability inquiry. Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579, 589 [27 U.S.P.Q.2d 1200] (1993)…

In Kumho Tire Co. v. Carmichael (526 U.S. 137, 119 S.Ct. 1167), the Court expanded Daubert’s holding to all expert testimony, rather than just the scientific testimony challenged in the Daubert case…

… …The standard governing the administration of a proper likelihood of

confusion survey originally was set forth in this district in Toys R Us…and has been repeatedly used and cited by courts throughout the country. See Schering, 189 F.3d at 225…

… …Aside from this…holding, the Second Circuit also held that

“[r]egardless of the basis cited for admitting these surveys,…errors in methodology…properly go only to the weight of the evidence.”…This holding is limited only by the Court’s balancing of the probative value of the evidence as opposed to its likely prejudice or confusion under Rule 403…

Pizza Hut Inc. v. Papa John’s Intern., 80 F. Supp. 2d 600, 612, 613 n.13, 614 (N.D. Tex. 2000)

[Defendant] also contends that the jury’s verdict cannot stand because [Plaintiff] failed to present consumer survey evidence. The record reflects that the only evidence of consumer surveys consisted of the three studies…These studies tested the effect of two of [Defendant’s] taste test television commercials and the [Defendant’s] pizza delivery box.

… n.13 The court excluded from the jury’s consideration the testimony

of…[Plaintiff’s expert] with reference to the…surveys…on Daubert grounds, but admitted it with respect to Pizza Hut’s prayer for injunctive relief.

… In a number of opinions from other Circuits, cited by [Defendant] in its motion and brief, courts have stated that consumer surveys are necessary… Despite the frequent pronouncements of sister Circuit courts, the court has found no cases holding as a matter of law that a consumer survey is a sine qua non for establishing liability under the Lanham Act where the advertising at issue is not literally false…

Under some circumstances a consumer survey may be necessary where the consumers to whom the advertising was addressed have specialized training beyond the knowledge and expertise of lay persons… However, it is clear that the targeted audience of [Defendant’s] advertising, i.e., potential purchasers of chain pizza products, do not constitute a group which has some higher level of expertise or knowledge than that possessed by the consuming public in general. Similarly,

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given the nature of the advertising at issue, there is no reason to believe that it conveyed esoteric messages which would not be understood by the consumer population at large.

… Under the circumstances of this case, the evidence presented to the jury

and the instructions given to the jury, [Plaintiff] was not required to prove its claims with consumer surveys…

Dick’s Sporting Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., 188 F.3d 501 (Table): 1999 WL 639165, *5 (4th Cir. 1999), designated “Unpublished Disposition”

…[Defendant] moved to exclude the [Plaintiff’s] Report from evidence…the district court found that the [Plaintiff’s] Report fell short of establishing secondary meaning for the following reasons: (1) it failed to address the relevant time period…; (2) it focused unjustifiably on license and gun permit buyers; and (3) it excluded substantial portions of the relevant population…

… After careful review of the [Plaintiff’s] Report, this court finds that the district court would have abused its discretion had it admitted the report into evidence…

National Football League Properties, Inc. v. Prostyle, Inc., 57 F. Supp. 2d 665, 668, 669, 672, 673 (E.D. Wis. 1999)

According to the recent Supreme Court decision Kumho Tire Company, Ltd. v. Carmichael…the district court has a special “gatekeeping obligation” to ensure that all expert testimony “is not only relevant, but reliable.”…(…Daubert v. Merrell Dow Pharmaceuticals, Inc…). In this spirit, defendants ask the court to exercise its “gatekeeping obligation” to exclude [Plaintiff’s expert’s] report and the opinions stated therein… The court concludes that [Plaintiff’s] survey…is seriously flawed. The main problem with the survey…is that it essentially asks only one question…and without…any “control”…or…any control questions…see…McCarthy… (explaining need for controls to account for “background noise”); [and] Shari Seidman Diamond, Reference Guide on Survey Research, in Reference Manual on Scientific Evidence…

[Plaintiff’s expert’s] failure to include a control group or question in his [survey] is puzzling for several reasons. [Plaintiff’s expert] has emphasized in both his testimony in other cases and in his academic writing [the necessity of] a control…

… Thus, pursuant to Daubert and Kumho Tire, the court will exclude [Plaintiff’s expert’s] survey evidence and any conclusions he has reached based on that evidence…

…

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…the court will grant defendant’s motion in limine to exclude the…report of [Plaintiff’s expert] and the opinions stated therein. Because Rule 37(c)(1) and Rule 26(a)(2) the Federal Rules of Civil Procedure preclude an expert from testifying at trial regarding opinions not previously disclosed in an expert report…the court will preclude [Plaintiff’s expert] from offering expert testimony at trial.

Starter Corp. v. Converse, Inc., 170 F.3d 286, 297 (2d Cir. 1999)

…the district court granted [Defendant’s] motion to exclude [Plaintiff’s]

survey and expert testimony thereon. The court reasoned (1) that the survey was not relevant because it did not test or demonstrate likelihood of consumer confusion, if any, and (2) that the slight probative value was outweighed by its prejudicial effect under Rule 403. At trial, the district court reaffirmed its exclusion, finding that the survey was little more than a memory test, testing the ability of the participants to remember the names of the shoes they had just been shown and gave no indication of whether there was a likelihood of confusion in the marketplace.

We hold that the district court did not abuse its discretion in finding that any probative value of the survey was outweighed by its potential to confuse the issues in the case. As long as expert survey evidence possesses sufficient “Circumstantial guarantees of trustworthiness,” a court may properly rely upon it to establish the likelihood or remoteness of confusion in a trademark dispute...

National Football League Properties, Inc. v. Prostyle, Inc., 16 F. Supp.2d 1012, 1019 (E.D. Wis. 1998)

Furthermore, defendants correctly point out that [Plaintiffs’ expert’s] conclusion regarding confusion was not stated in terms of what consumers believed should have happened, as the survey question was stated, but instead was phrased in terms of what actually happened…Therefore, the court will grant defendants’ motion in limine regarding all survey answers to the above question and any conclusions based on those answers. Because all four conclusions of the [Plaintiffs’ expert’s] study…must be excluded from trial, the court will exclude his entire report and survey.

…the court at this time will not preclude [Plaintiffs’ expert] from testifying.

Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454, 1465-1467, 1469 (D. Kan. 1996)

…The methodological defects in the other surveys, however, are so significant that they render the remaining survey evidence inadmissible for the purposes for which it was offered. The court recognizes that methodological deficiencies generally relate to the weight given to a survey’s conclusions rather than to its admissibility…but if

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those deficiencies are so substantial as to render the survey’s conclusions untrustworthy, a court should exclude the survey from evidence…the Supreme Court underscored a trial judge’s responsibility to examine expert testimony critically to ensure that it is both reliable and relevant before admitting it. This responsibility extends to the survey evidence at issue here.

… Multiple flaws mar the value of the consumer survey evidence…First, the surveyors always handed the consumer the [Plaintiff’s] jacket first. This creates an order effect…By always handing the [Plaintiff’s] jacket…first, [Plaintiff’s expert] created an order effect of undeterminable magnitude. Second, [Plaintiff’s expert’s] definition of the consumer market is fatally underinclusive…

… The flaws in…[the] surveys are so substantial and pervasive that they render the survey evidence inadmissible…The most substantial flaws…are that the surveys [were] underinclusive, select[ed] [respondents] using a biased method, and [did not] present the overall look of the [product].

Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334, 335-336 (S.D.N.Y. 1995)

…The matter is before the Court on defendants’ motions in limine. Defendants seek to exclude plaintiff’s consumer survey…on the added ground that the methodology employed in the survey renders it so unreliable that it should not be placed before the jury…

… The methodology employed here bears little resemblance to the more

scientifically conducted surveys often seen in litigation such as this. Plaintiff’s counsel designed a questionnaire and sent one of their employees,…a part-time typist, drama student and actress, into Washington Square Park, which is located within blocks of one of plaintiff’s retail stores. Over a two day period, she approached a number of people who, she said, looked as if they could afford plaintiff’s shoes, which sell at prices considerably higher than defendants’. [The lawyer’s assistant], who was shod in defendants’ shoes, asked the well-to-do passersby whether they could identify the shoes she was wearing. Although she had a questionnaire designed by counsel, she did not necessarily ask the questions as written. All told, she interviewed forty-six people…

… While methodological defects in surveys usually go to the weight rather

than the admissibility of the evidence…there comes a point where the probative value of the survey is exceeded substantially by its prejudicial effect and potential for confusion and waste of time. See Federal Rule of Evidence 403…Given the lack of a proper universe and sample, the lack of reproducibility, the poor choice of location, and the potential bias introduced by the choice of interviewer, among other methodological defects, this survey in my view has no significant value in establishing the proportion of consumers, if any, likely to confuse defendants’

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products with plaintiff’s. Accordingly, the cumulative survey results and any opinion evidence based upon them is excluded…

Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114, 1118-1119 (S.D.N.Y. 1993)

At trial, [Plaintiff] offered three surveys which it had commissioned…The court ruled the surveys were inadmissible because they were hearsay not falling within any exception under Federal Rule of Evidence 803…[Plaintiff] urges again that the surveys are admissible because they fall within the business records exception of Rule 803(6)…

… There was inadequate foundation as to Exhibits 8, 9, and 10 that [Plaintiff’s witness] was a “person with knowledge” within the meaning of the Rule. The trustworthiness of the documents is also unclear because of the foundation that was laid…There was no testimony that [Plaintiff’s witness] saw the original data or that he had any knowledge of the steps that [someone else in Plaintiff’s Marketing Department] took in preparing the report. The fact that [Plaintiff] may have relied upon the report in marketing makes no difference. The court cannot be assured of the accuracy of the document. Nor can the court or opposing counsel investigate the accuracy of the material…

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PROCEDURAL ISSUES

Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 U.S. Dist. LEXIS 14687, *33-*35, *39 (D. Conn. 2010)

Discovery in this case closed on September 14, 2009... The Defendants filed their motion for summary judgment on

October 15, 2009. On November 25, 2009, [Plaintiff] filed its response in opposition thereto. Attached as Exhibit 95 to [Plaintiff’s] response brief was an Affidavit from [Plaintiff’s expert], in which he criticizes the statistical analysis performed in the [Defendants’ study] and concludes that the Study is unreliable. None of the opinions contained in the [Plaintiff’s expert’s] Affidavit appeared in [Plaintiff’s expert’s] Rule 26(a) expert report, nor did [Plaintiff] make any attempt to supplement [Plaintiff’s expert’s] report at any time.

Fed. R. Civ. P. 26(a)(2)(B) requires expert witnesses to submit, during discovery, a report that contains, among other things, “a complete statement of all opinions the witness will express and the basis and reasons for them.”...

Here, [Plaintiff] has provided no explanation at all as to why it failed to comply with the Rule 26(a)(2) disclosure requirement.

... ...Accordingly, the Defendants’ motion to preclude the [Plaintiff’s expert’s] Affidavit is granted...

Rainbow Play Systems, Inc. v. Backyard Adventure, Inc., 2009 U.S. Dist. LEXIS 93623, *9-*10 (S.D. S.D. 2009

Defendants in their motion to strike also contend that an affidavit [Plaintiff] filed of its survey expert witness…should be stricken. Defendants contend this affidavit contains 14 additional paragraphs of opinions not previously disclosed in [Plaintiff’s] expert report…Defendants have proffered no expert report to contradict the findings of [Plaintiff’s expert], and have not deposed [Plaintiff’s expert]. The Court concludes that [Plaintiff’s expert’s] report merely responds to the challenges made by the Defendants and elaborates upon his earlier report, and does not violate the requirements of FED. R. CIV. P. 26.

Kevin T. McCarney dba Poquito Mas v. Una Mas, Inc., 2004 T.T.A.B. LEXIS 51, *19 (T.T.A.B. 2004). This disposition is not citable as a precedent of the T.T.A.B.

Another issue concerns a survey that applicant introduced to show that there was no likelihood of confusion. Opposer objects to the survey on the ground that applicant has not shown that the survey’s designer…is an expert. In addition, even if the survey is admitted into evidence, opposer argues that it includes many flaws and should be given little or no weight…

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We start by noting that opposer’s objection should have been raised earlier. Opposer did not raise these objections to the survey in his opening brief, and for that reason, opposer’s objection to the survey will not be sustained.

Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355, 376 (S.D.N.Y. 2003)

…This Court declines to consider any survey or expert report, including the Pilot Survey, offered to defendants for the first time on a summary judgment motion and inexplicably not produced during discovery…

Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 U.S. Dist. LEXIS 16887, *3, *6, *9 (S.D.N.Y. 2003)

…[Plaintiff]…asked for all expert reports from cases in which [Defendant’s expert] testified in the last five years. In response to this request, [the company employing Defendant’s expert] concedes that it has the expert reports but objects to producing them for plaintiffs.

The issue before the court is whether plaintiffs are entitled to the [Defendant’s expert’s] reports prepared in cases in which [Defendant’s expert] testified in the last five years…

… …plaintiffs’ request for [Defendant’s expert’s] expert reports from all

cases in which he was an expert in the last five years is beyond the scope of Rule 26.

… …The plain language of Rule 26 directs parties to provide a list of cases,

not the expert reports relied upon in those cases… Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408, *4, *6-*8 (T.T.A.B. 2003). This disposition is not citable as a precedent of the T.T.A.B.

The issue is whether opposer’s survey and the testimony that explains it were proper rebuttal as responsive to applicant’s asserted defenses, or, as applicant asserts, this testimony and these exhibits could only have been presented as part of opposer’s case in chief.

The survey was designed to determine whether the third-party uses shown by applicant during its testimony period have diluted the fame of opposer’s “DUKE” mark for clothing, and whether, as applicant argues its testimony and evidence shows, such third-party uses of similar marks have created a marketplace in which confusion between opposer’s mark and the mark applicant seeks to register would not be likely.

… There is no question that [Opposer’s expert’s] testimony and the survey he

conducted would have been appropriate to present as part of opposer’s case in chief. Neither party contests this fact. Applicant argues that once opposer failed

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to conduct and introduce the survey during its testimony period, however, opposer could not thereafter introduce it…

After careful consideration of the arguments of both parties, we have decided to consider this testimony and evidence because it is proper rebuttal under the circumstances presented by this case. During its initial testimony period, opposer had the burden of establishing its standing; of establishing its ownership of the marks with which it contends applicant’s mark would be likely to cause confusion; of establishing use of these marks before applicant filed the application to register the mark it seeks to register; and of establishing a prima facie case of likelihood of confusion based on the similarity of the marks and the relationship between opposer’s goods and the goods with which applicant intends to use the mark it seeks to register.

…opposer was not required to anticipate or guess what grounds of defense might be raised by applicant, or to counter those grounds of defense prior to their assertion. Dilution was not raised by applicant as a defense in its answer to the Notice of Opposition. When applicant presented testimony concerning the alleged dilution of opposer’s marks, opposer properly rebutted the dilution defense asserted by applicant with three depositions, one of which is the deposition of [Opposer’s expert] to which applicant objects. Under these circumstances, his testimony and the exhibits to it are admissible as rebuttal testimony.

Lucent Information Mgmt. Inc. v. Lucent Technologies Inc., 5 F. Supp. 2d 238, 242-244 (D. Del. 1998)

[Defendant’s use of copyrighted business letter in survey conducted for discovery in trademark infringement action is fair use since defendant]...has only used [Plaintiff’s] letter in a survey, as part of its preparation for litigation [and is not]...profiting from the survey it is conducting...

... ...[and since Plaintiff’s letter] is not meant to be creative or original...

... ...[and] there is no potential market for [Plaintiff’s] letter...and no one would be interested in buying it...

... [Defendant’s use of business letters, which are very similar to plaintiff’s letter to its potential customers, in survey conducted for discovery in trademark infringement action did not constitute “false or misleading” description or representation of fact in violation of Lanham Act’s Section 43(a), 15 USC 1125(a) since defendant’s first letter is exact copy of plaintiff’s letter]...except that the date matched the date of the survey.

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BIBLIOGRAPHY INTELLECTUAL PROPERTY SURVEYS BY ISSUE This appendix contains citations, by issue, for all identified published opinions from January 1998 through December 2010, in which survey evidence was referenced. Genericness Surveys First Circuit Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337 (D. R.I. 2007) (Genericness) Second Circuit Pfizer, Inc. v. Arye Sachs, 2009 U.S. Dist. LEXIS 81188 (S.D.N.Y. 2009) (Genericness) Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286 (S.D.N.Y. 2000) (Genericness) Third Circuit E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd Cir. 2008) (Genericness) (Secondary Meaning) E.T. Browne Drug Co. v. Cococare Products, Inc., 2006 U.S. Dist. LEXIS 66515 (D. N.J. 2006) (Genericness) Interstate Net Bank v. Netbank Inc. and Netbank, 221 F. Supp. 2d 513 (D. N.J. 2002) (Genericness) J&J Snack Foods, Corp. v. Nestle USA, Inc. and The Earthgrains Co., 149 F. Supp. 2d 136 (D. N.J. 2001) (Genericness) Fourth Circuit BellSouth Corp. v. White Directory Publishers Inc., 42 F. Supp. 2d 598 (M.D. N.C. 1999) (Genericness) Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001) (Genericness) Fifth Circuit The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues)

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March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003) (Genericness) (Secondary Meaning) March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 162 F. Supp. 2d 560 (N.D. Tex. 2001) (Genericness) Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (Genericness) (Secondary Meaning) Sixth Circuit Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926 (M.D. Tenn. 2001) (Genericness) General Conference Corp. of Seventh-Day Adventists v. Walter McGill, 2008 U.S. Dist. LEXIS 45526 (W.D. Tenn. 2008) (Genericness) Seventh Circuit Baniel v. Guild, 2000 WL 1349254 (N.D. Ill. 2000) (Genericness) Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528 (7th Cir. 2003) (Genericness) Ty, Inc. v. Softbelly’s, Inc., 2001 U.S. Dist. LEXIS 1341 (N.D. Ill. 2001) (Genericness) (Secondary Meaning) Eighth Circuit PSK, LLC v. Randy Hicklin, 2010 U.S. Dist. LEXIS 127318 (N.D. Iowa 2010) (Genericness) (Secondary Meaning) Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (Genericness) The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004) (Genericness) (Secondary Meaning) Ninth Circuit Automobile Club of Southern California v. The Auto Club, Ltd., 2007 U.S. Dist. LEXIS 19221, (C.D. Cal. 2007) (Genericness) Big Island Candies, Inc. v. The Cookie Corner, 269 F. Supp. 2d 1236 (D. Haw. 2003) (Genericness)

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Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2007 U.S. Dist. LEXIS 2525 (C.D. Cal. 2007) (Genericness) Microsoft Corp. v. Lindows.com, Inc., 2002 U.S. Dist. LEXIS 24616, (W.D. Wash. 2002) (Genericness) Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353 (C.D. Cal. 2008) (Genericness) (Secondary Meaning) Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832 (9th Cir. 2001) (Genericness) Ugg Holdings, Inc. v. Clifford Severn, et al., 2005 U.S. Dist. LEXIS 45783 (C.D. Cal. 2005) (Genericness) Zipee Corp. and Zipee.com, Inc. v. United States Postal Service, 140 F. Supp. 2d 1084 (D. Or. 2000) (Genericness) Tenth Circuit Robert Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2004) (Genericness) Eleventh Circuit Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565 (N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues) D.C. Circuit Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1 (D. D.C. 2006) (Genericness) Federal Circuit In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) (Genericness) T.T.A.B. In re 1-800 Contacts, Inc., 2002 T.T.A.B. LEXIS 247 (T.T.A.B. 2002) (Genericness) (Secondary Meaning) Arrow Trading Co., Inc. v. Victorinox A.G., 2003 T.T.A.B. LEXIS 310 (T.T.A.B. 2003) (Genericness) This disposition is not citable as a precedent of the T.T.A.B..

Genericness 203

Arrow Trading Co., Inc. v. Victorinox A.G., 2000 T.T.A.B. LEXIS 202 (T.T.A.B. 2000) (Genericness) ((Daubert/Admissibility Issues) This disposition is not citable as precedent of the T.T.A.B. Buell Motorcycle Co. v. Honda, 2003 T.T.A.B. LEXIS 359 (T.T.A.B. 2003) (Genericness) This disposition is not citable as a precedent of the T.T.A.B.. In re Callaway Golf Co., 2001 T.T.A.B. LEXIS 599 (T.T.A.B. 2001) (Genericness) This disposition is not citable as precedent of the T.T.A.B. In re Credit.com, Inc., 2008 T.T.A.B. LEXIS 321 (T.T.A.B. 2008) (Genericness) This opinion is not a precedent of the T.T.A.B. Danish Dairy Bd., Inc. v. The Ministry of Commerce, Cyprus, 1999 T.T.A.B. LEXIS 482 (T.T.A.B. 1999) (Genericness) This disposition is citable as precedent of the T.T.A.B. Freeman v. Nat’l Ass’n of Realtors, 2002 T.T.A.B. LEXIS 381 (T.T.A.B. 2002) (Genericness) In re Hotels.com, L.P., 2008 T.T.A.B. LEXIS 60 (T.T.A.B. 2008) (Genericness) Jacob Zimmerman v. Nat’l Ass’n of Realtors, 2004 T.T.A.B. LEXIS 180 (T.T.A.B. 2004) (Genericness) This disposition is citable as precedent of the T.T.A.B. In re Network Associates Technology, Inc., 2005 T.T.A.B. LEXIS 27 (T.T.A.B. 2005) (Genericness) This disposition is not citable as a precedent of the T.T.A.B. QVC, Inc. v. Home Shopping Network, Inc., 1999 T.T.A.B. LEXIS 751 (T.T.A.B. 1999) (Genericness) This opinion is not citable as a precedent of the T.T.A.B. Schwan’s Sales Enterprises, Inc. v. Kraft Pizza Co., 2006 T.T.A.B. LEXIS 190 (T.T.A.B. 2006) (Genericness) This opinion is not citable as a precedent of the T.T.A.B. Tea Bd. of India v. The Republic of Tea, Inc., 2006 T.T.A.B. LEXIS 330 (T.T.A.B. 2006) (Genericness)

Descriptiveness/Suggestiveness 204

Descriptiveness/Suggestiveness Surveys Second Circuit Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 2004 U.S. Dist. LEXIS 19278 (D. Vt. 2004) (Descriptiveness) Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 327 F. Supp. 2d 278 (D. Vt. 2003) (Descriptiveness) Third Circuit J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040 (D. N.J. 2003) (Descriptiveness) (Daubert/Admissibility Issues) J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358 (D. N.J. 2002) (Descriptiveness) (Daubert/Admissibility Issues) Fifth Circuit Blendco, Inc. v. Conagra Foods, Inc., 2005 U.S. App. LEXIS 9075 (5th Cir. 2005) (Descriptiveness) Seventh Circuit Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004) (Descriptiveness) Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 22774 (N.D. Ill. 2003) (Descriptiveness) Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 14937 (N.D. Ill. 2003) (Descriptiveness) Ninth Circuit Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080 (C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility Issues) T.T.A.B. In re DaimlerChrysler AG, 2001 T.T.A.B. LEXIS 557 (T.T.A.B. 2001) (Descriptiveness) This disposition is not citable as precedent of the T.T.A.B.

Descriptiveness/Suggestiveness 205

In re Indian Industries, Inc., 2004 T.T.A.B. LEXIS 621 (T.T.A.B. 2004) (Descriptiveness) This disposition is not citable as a precedent of the T.T.A.B. Warner-Lambert Co. v. Nabisco, Inc., 1999 T.T.A.B. LEXIS 143 (T.T.A.B. 1999) (Descriptiveness) This disposition is not citable as a precedent of the T.T.A.B.

Secondary Meaning 206

Secondary Meaning Surveys First Circuit Bay State Savings Bank v. Baystate Financial Services, LLC, 2007 U.S. Dist. LEXIS 27148 (D. Mass. 2007) (Secondary Meaning) The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1st Cir. 2004) (Secondary Meaning) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241 (D. R.I. 2003) (Secondary Meaning) (Likelihood of Confusion) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221 (D. R.I. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) Carroll Shelby v. Superformance Int’l, Inc., 2006 U.S. App. LEXIS 1096 (1st Cir. 2006) (Secondary Meaning) Carroll Shelby v. Superformance Int’l, Inc., 251 F. Supp. 2d 983 (D. Mass. 2002) (Secondary Meaning) Fibermark, Inc. v. Merrimac Paper Co., Inc., 2003 U.S. Dist. LEXIS 26866 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) I.P. Lund Trading ApS and Kroin Inc. v. Kohler Co. and Robern, Inc., 118 F. Supp. 2d 92 (D. Mass. 2000) (Secondary Meaning) Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933 (D. R.I. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. Puerto Rico 2004) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Yankee Spirits, Inc. v. Gasbarro, 1998 U.S. Dist. LEXIS 22159 (D. Mass. 1998) (Secondary Meaning)

Secondary Meaning 207

Second Circuit BIC Corps. and Wite-Out Products, Inc. v. Far Eastern Source Corp., 2000 U.S. Dist. LEXIS 18226 (S.D.N.Y. 2000) (Secondary Meaning) Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217 (S.D.N.Y. 2004) (Secondary Meaning) Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 U.S. Dist. LEXIS 16887 (S.D.N.Y. 2003) (Secondary Meaning) Cartier v. Samo’s Sons, Inc., 2005 U.S. Dist. LEXIS 23395 (S.D.N.Y. 2005) (Secondary Meaning) Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277 (2d Cir. 2008) (Secondary Meaning) Coach, Inc. v. We Care Trading Co., Inc., 2002 U.S. App. LEXIS 28143 (2d Cir. 2002) (Secondary Meaning) Coach, Inc. v. We Care Trading Co., Inc., 2001 U.S. Dist. LEXIS 9879 (S.D.N.Y. 2001) (Secondary Meaning) Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., and S & H Greenpoints.com, Inc., 116 F. Supp. 2d 405 (S.D.N.Y. 2000) (Secondary Meaning) Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478 (E.D.N.Y. 2008) (Secondary Meaning) Imig, Inc. v. Electrolux Home Care Products, Ltd., 2007 U.S. Dist. LEXIS 20530 (E.D.N.Y. 2007) (Secondary Meaning) Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008) (Secondary Meaning) (Likelihood of Confusion) Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320 (S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/ Admissibility Issues) Nabisco, Inc. v. PF Brands, Inc. and Pepperidge Farm, Inc., 50 F. Supp. 2d 188 (S.D.N.Y.1999) (Secondary Meaning) People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173 (D. Conn. 2010) (Secondary Meaning) (Likelihood of Confusion)

Secondary Meaning 208

Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296 (S.D.N.Y. 1999) (Secondary Meaning) (Likelihood of Confusion) Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) (Secondary Meaning) (Likelihood of Confusion) Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458 (S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion) (Daubert/ Admissibility Issues) Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634 (E.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion) WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion) Third Circuit Binney & Smith v. Rose Art Industries, 2000 U.S. Dist. LEXIS 18384 (E.D. Pa. 2000) (Secondary Meaning) Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, (3d Cir. 2000) (Secondary Meaning) E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd Cir. 2008) (Genericness) (Secondary Meaning) Fourth Circuit America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (Secondary Meaning) Black & Decker Inc. v. Pro-Tech Power Inc. P & F, 26 F. Supp. 2d 834 (E.D. Va. 1998) Secondary Meaning Dick’s Sporting Goods, Inc. v. Dick’s Clothing and Sporting Goods, Inc., 188 F.3d 501 (Table): 1999 WL 639165 (4th Cir. 1999), designated “Unpublished Disposition”. (Secondary Meaning) (Daubert/Admissibility Issues) U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517 (4th Cir. 2002) (Secondary Meaning) Fifth Circuit Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas Subsidiary, 2006 U.S. Dist. LEXIS 9752 (N.D. Tex. 2006) (Secondary Meaning) (Daubert/Admissibility Issues)

Secondary Meaning 209

The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist. LEXIS 23691 (N.D. Tex. 2004) (Secondary Meaning) (Daubert/Admissibility Issues) Honestech, Inc. v. Sonic Solutions, 725 F. Supp. 2d 573 (W.D. Ttex. 2010) (Secondary Meaning) Kensington Partners v. Cordillera Ranch, Ltd., 1998 U.S. Dist. LEXIS 23673 (W.D. Tex. 1998) (Secondary Meaning) March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003) (Genericness) (Secondary Meaning) Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (Secondary Meaning) (Likelihood of Confusion) Powertrain Inc. v. American Honda Motor Co., Inc., 2007 U.S. Dist. LEXIS 55626 (N.D. Miss. 2007) (Secondary Meaning) Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (Genericness) (Secondary Meaning) Sixth Circuit AutoZone, Inc. and Speedbar, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (Secondary Meaning) Autozone, Inc. and Speedbar, Inc. v. Tandy Corp., 174 F. Supp. 2d 718 (M.D. Tenn. 2001) (Secondary Meaning) Citizens Banking Corp. v. Citizens Financial Group, Inc., 2009 U.S. App. LEXIS 8366 (6th Cir. (Secondary Meaning) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800 (E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion) General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (Secondary Meaning) (Likelihood of Confusion) Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp. 2d 700 (N.D. Ohio 1999) (Secondary Meaning)

Secondary Meaning 210

Rock & Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 71 F. Supp. 2d 755 (N.D. Ohio 1999) (Secondary Meaning) (Likelihood of Confusion) Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist. LEXIS 1378 (W.D. Mich. 2006) (Secondary Meaning) (Daubert/Admissibility Issues) Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2005 U.S. Dist. LEXIS 30311 (W.D. Mich. 2005) (Secondary Meaning) Winchester Federal Savings Bank v. The Winchester Bank, Inc., 359 F. Supp. 2d 561 (E.D. Ky. 2004) (Secondary Meaning) Seventh Circuit AM General Corp. and General Motors Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir. 2002) (Secondary Meaning) (Likelihood of Confusion) Atlas Electric Devices Co. v. Q-Panel Lab Products Corp., 2001 U.S. Dist. LEXIS 24308 (N.D. Ill. 2001) (Secondary Meaning) Best Vacuum, Inc. v. Ian Design, Inc., 2006 U.S. Dist. LEXIS 87260 (N.D. Ill. 2006) (Secondary Meaning) Bretford Mfg., Inc. v. Smith System Mfg. Co., 116 F. Supp. 2d 951 (N.D. Ill. 2000) (Secondary Meaning) Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369 (N.D. Ill. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 5940 (N.D. Ill. 2003) (Secondary Meaning) Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill. 1998) (Secondary Meaning) (Likelihood of Confusion) Simon Property Group, L.P. v. mySimon, Inc., 2003 U.S. Dist. LEXIS 5438 (S.D. Ind. 2003) (Secondary Meaning) Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (Secondary Meaning) Ty Inc. v. The Jones Group, Inc., 2001 U.S. Dist. LEXIS 18912 (N.D. Ill. 2001) (Secondary Meaning) Ty Inc. v. The Jones Group, Inc., 98 F. Supp. 2d 988 (N.D. Ill. 2000) (Secondary Meaning) Ty Inc. v. Softbelly’s Inc., 2006 WL 5111124 (N.D. Ill. 2006) (Secondary Meaning)

Secondary Meaning 211

Ty Inc. v. Softbelly’s, Inc., 2001 U.S. Dist. LEXIS 1341 (N.D. Ill. 2001) (Genericness) (Secondary Meaning) Eighth Circuit Fair Isaac Corp. v. Experian Information Solutions Inc., 645 F. Supp. 2d 734(D. Minn. 2009) (Secondary Meaning) Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000) (Secondary Meaning) (Likelihood of Confusion) (Dilution) Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001 (8th Cir. 2005) (Secondary Meaning) (Likelihood of Confusion) Home Builders Ass’n of Great St. Lous v. L&L Exhibition Mgmt., Inc., 1999 U.S. Dist. LEXIS 23525 (E.D. Mo. 1999) (Secondary Meaning) Minnesota Mining and Mfg. Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d 997 (D. Minn. 2000) (Secondary Meaning) PSK, LLC v. Randy Hicklin, 2010 U.S. Dist. LEXIS 127318 (N.D. Iowa 2010) (Genericness) (Secondary Meaning) R.H. Donnelley Inc. v. USA Northland Directories, Inc., 2004 U.S. Dist. LEXIS 26902 (D. Minn. 2004) (Secondary Meaning) Schwan's IP, LLC, v. Kraft Pizza Co., 379 F. Supp. 2d 1016 (D. Minn. 2005) (Secondary Meaning) The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004) (Genericness) (Secondary Meaning) Ninth Circuit Aerus LLC v. ProTeam, Inc., 2007 U.S. Dist. LEXIS 97683 (S.D. Cal. 2007) (Secondary Meaning) California Bd. Sports, Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 82225 (S.D. Cal. 2007) (Secondary Meaning) Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708 (N.D. Cal. 2004) (Secondary Meaning) (Daubert/Admissibility Issues) Chrysler Corp. v. Vanzant, 44 F. Supp. 2d 1062 (C.D. Cal. 1999) (Secondary Meaning)

Secondary Meaning 212

Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001) (Secondary Meaning) Credit One Corp. v. Credit One Financial,Inc., 2009 U.S. Dist. LEXIS 99029 (C.D. Cal. 2009) (Secondary Meaning) Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. 2007) (Secondary Meaning) (Likelihood of Confusion) Excelligence Learning Corp. v. Oriental Trading Co., Inc., 2004 U.S. Dist. LEXIS 30370 (N.D. Cal. 2004) (Secondary Meaning) Express, LLC v. Forever 21, Inc., 2010U.S. Dist. LEXIS 91705 (C.D. Cal. 2010) (Secondary Meaning) Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (Secondary Meaning) (Fame) Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083 (C.D. Cal. 2000) (Secondary Meaning) (Fame) Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 98787 (C.D. Cal. 2006) (Secondary Meaning) (Likelihood of Confusion) Joel D. Wallach v. Longevity Network, Ltd., 2005 U.S. Dist. LEXIS 45937 (C.D. Cal. 2005) (Secondary Meaning) Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary Meaning) (Likelihood of Confusion) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625 (N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution) Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353 (C.D. Cal. 2008) (Genericness) (Secondary Meaning) Resource Lenders, Inc. v. Source Solutions, Inc., 2005 U.S. Dist. LEXIS 38732 (E.D. Cal. 2005) (Secondary Meaning) Seed Lighting Design Co., Ltd. v. Home Depot, 2005 U.S. Dist. LEXIS 44741 (N.D. Cal. 2005) (Secondary Meaning) Shuffle Master Inc. v. Yehia Awada, 2006 U.S. Dist. LEXIS 66418 (D. Nev. 2006) (Secondary Meaning) Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp. 2d 1177 (C.D. Cal. 2001) (Secondary Meaning) (Daubert/Admissibility Issues)

Secondary Meaning 213

Walker & Zanger, Inc. v. Paragon Industries, Inc., 2007 U.S. Dist. LEXIS 35520 (N.D. Cal. 2007) (Secondary Meaning) Tenth Circuit 1-800 Contacts, Inc. v. Lens.com, Inc., 2010U.S. Dist. LEXIS 132389 (D. Utah 2010) (Secondary Meaning) (Likelihood of Confusion) First Savings Bank, F.S.B. v. U.S. Bancorp, 117 F. Supp. 2d 1061 (D. Kan. 2000) (Secondary Meaning) General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711 (D. Utah 2010) (Secondary Meaning) (Likelihood of Confusion) Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454 (D. Kan. 1996) (Secondary Meaning) (Daubert/Admissibility Issues) Eleventh Circuit Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360 (N.D. Ga. 2010) (Secondary Meaning) (Daubert/Admissibility Issues) General Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154 (S.D. Fla. 2000) (Secondary Meaning) Trilink Saw Chain, LLC v. Blount, Inc., 583 F. Supp. 2d 1293 (N.D. Ga. 2008) (Secondary Meaning) (Daubert/Admissibility Issues) Vital Pharmaceuticals, Inc. v. American Body Building Products, LLC, 2007 U.S. Dist. LEXIS 3659 (S.D. Fla. 2007) (Secondary Meaning) Federal Circuit In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) (Secondary Meaning) T.T.A.B. In re 1-800 Contacts, Inc., 2002 T.T.A.B. LEXIS 247 (T.T.A.B. 2002) (Genericness) (Secondary Meaning) American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 244 (T.T.A.B. 2006) (Secondary Meaning) This opinion is not citable as a precedent of the T.T.A.B. American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 195 (T.T.A.B. 2006) (Secondary Meaning)

Secondary Meaning 214

American Girl, LLC v. Barry Epstein, 2009 T.T.A.B. LEXIS 412 (T.T.A.B. 2009) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Anvil Knitwear, Inc. v. Success Ware Inc., 2004 T.T.A.B. LEXIS 361 (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16 (T.T.A.B. 2008) (Secondary Meaning) (Likelihood of Confusion) Carl Walther Gmbh, In re, 2010 T.T.A.B. LEXIS 410 (T.T.A.B. 2010) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Cartier N.W., In re, 2010 T.T.A.B. LEXIS 337 (T.T.A.B. 2010) (Secondary Meaning) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Diamonique Corp. v. Wieck Family, Ltd., 2004 T.T.A.B. LEXIS 271 (T.T.A.B. 2004) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. Duramax Marine, LLC v. R.W. Fernstrum & Co., 2006 T.T.A.B. LEXIS 306 (T.T.A.B. 2006) (Secondary Meaning) Factory Five Racing, Inc. v. Carroll Shelby, 2010 T.T.A.B. LEXIS 402 (T.T.A.B. 2010) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. In re Ivanko Barbell Co., 2004 T.T.A.B. LEXIS 345 (T.T.A.B. 2004) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. The Oakland Corp. v. Nylok Fastener Corp., 1999 T.T.A.B. LEXIS 787 (T.T.A.B. 1999) (Secondary Meaning) This disposition is not citable as a precedent of the T.T.A.B. Nextel Communications, Inc. v. Motorola, Inc., 2009 T.T.A.B. LEXIS 443 (T.T.A.B. 2009) (Secondary Meaning) Nextel Communications, Inc. v. Motorola, Inc., 2006 T.T.A.B. LEXIS 166 (T.T.A.B. 2006) (Secondary Meaning) This opinion is not citable as a precedent of the T.T.A.B. Saint-Gobain Corp. v. 3M Co., 2007 T.T.A.B. LEXIS 82 (T.T.A.B. 2007) (Secondary Meaning) This opinion is a precedent of the T.T.A.B. In re Steelbuilding.com, Inc., 2007 T.T.A.B. LEXIS 122 (T.T.A.B. 2007) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 2009 T.T.A.B. LEXIS 132 (T.T.A.B. 2009) (Secondary Meaning) In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843 (T.T.A.B. 1999) (Secondary Meaning)

Secondary Meaning 215

In re U-Haul Int’l, Inc., 2003 T.T.A.B. LEXIS 484 (T.T.A.B. 2003) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. Wagner Spray Tech Corp. v. Graco, Inc., 2003 T.T.A.B. LEXIS 343 (T.T.A.B. 2003) (Secondary Meaning) This disposition is not citable as a precedent of the T.T.A.B. Wal-Mart Stores, Inc. v. Franklin Loufrani, 2009 T.T.A.B. LEXIS 113 (T.T.A.B. 2009) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. The William Carter Co. v. H.W. Carter & Sons, Inc., 2004 T.T.A.B. LEXIS 115 (T.T.A.B. 2004) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B.

Likelihood of Confusion 216

Likelihood of Confusion Surveys First Circuit Anheuser-Busch, Inc. v. Caught-on-Bleu, Inc., 288 F. Supp. 2d 105 (D. N.H. 2003) (Likelihood of Confusion) The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241 (D. R.I. 2003) (Secondary Meaning) (Likelihood of Confusion) Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (Likelihood of Confusion) Borinquen Biscuit Corp. v. M.V. Trading Corp., 2005 U.S. Dist. LEXIS 41452 (D. P.R. 2005) (Likelihood of Confusion) EMC Corp. v. Hewlett-Packard Co., 59 F. Supp. 2d 147 (D. Mass. 1999) (Likelihood of Confusion) Fibermark, Inc. v. Merrimac Paper Co., Inc., 2003 U.S. Dist. LEXIS 26866 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. P.R. 2004) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Second Circuit 1-800 Contacts, Inc. v. WhenU.Com, Inc. and Vision Direct, Inc., 414 F.3d 400 (2d Cir. 2005) (Likelihood of Confusion) 1-800 Contacts, Inc. v. WhenU.com, Inc. and Vision Direct, Inc., 309 F. Supp. 2d 467 (S.D.N.Y. 2003) (Likelihood of Confusion) 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266 (S.D.N.Y. 2006) (Likelihood of Confusion) 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 2005 U.S. Dist. LEXIS 7462 (S.D.N.Y. 2005) (Likelihood of Confusion)

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Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334 (S.D.N.Y. 1995) (Likelihood of Confusion) (Daubert/Admissibility Issues) Aztar Corp. v. NY Entm’t, LLC, 15 F. Supp. 2d 252 (E.D.N.Y. 1998) (Likelihood of Confusion) Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 2000 U.S. Dist. LEXIS 19852 (E.D.N.Y. 2000) (Likelihood of Confusion) Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335 (E.D.N.Y. 2000) (Likelihood of Confusion) (Daubert/Admissibility Issues) Bear U.S.A., Inc. v. Kim, 71 F. Supp. 2d 237 (S.D.N.Y. 1999) (Likelihood of Confusion) Beverage Marketing USA, Inc. v. South Beach Beverage Corp., 2000 U.S. Dist. LEXIS 16504 (S.D.N.Y. 2000) (Likelihood of Confusion) Brockmeyer v. The Hearst Corp., 248 F. Supp. 2d 281 (S.D.N.Y. 2003) (Likelihood of Confusion) Cache, Inc. v. M.Z. Berger & Co., 2001 U.S. Dist. LEXIS 226 (S.D.N.Y. 2001) (Likelihood of Confusion) Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242 (S.D.N.Y. 1999) (Likelihood of Confusion) Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347 (W.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Cumberland Packing Corp. v. Monsanto Co., 140 F. Supp. 2d 241 (E.D.N.Y. 2001) (Likelihood of Confusion) Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561 (E.D.N.Y. 1999) (Likelihood of Confusion) Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Addmissibility Issues) Dennis F. Gross, M.D. v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Elements/Jill Schwartz, Inc. v. Gloriosa Co. and Gloria Pacosa, 2002 U.S. Dist. LEXIS 12669 (S.D.N.Y. 2002) (Likelihood of Confusion) Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. Culbro Corp. and General Cigar Co., Inc., 2004 U.S. Dist. LEXIS 4935 (S.D.N.Y. 2004) (Likelihood of Confusion)

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First Nat’l Bank of Omaha, Inc. v. MasterCard Int’l Inc., 2004 U.S. Dist. LEXIS 13162 (S.D.N.Y. 2004) (Likelihood of Confusion) Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp. 2d 399 (S.D.N.Y. 2002) (Likelihood of Confusion) Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457 (S.D.N.Y. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052 (S.D.N.Y. 2008) (Likelihood of Confusion) Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc., 64 U.S.P.Q.2d 1039 (S.D.N.Y. 2002) (Likelihood of Confusion) Hermès Int’l v. Lederer de Paris Fifth Avenue Inc., 50 F. Supp. 2d 212 (S.D.N.Y. 1999) (Likelihood of Confusion) Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008) (Secondary Meaning) (Likelihood of Confusion) Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 64393 (S.D.N.Y. 2006) (Likelihood of Confusion) Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 20787 (S.D.N.Y. 2006) (Likelihood of Confusion) Kargo Global, Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320 (S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/ Admissibility Issues) La Cibeles, Inc. v. Adipar, Ltd., 2000 U.S. Dist. LEXIS 12676 (S.D.N.Y. 2000) (Likelihood of Confusion) Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360 (S.D.N.Y. 2000) (Likelihood of Confusion) Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2006 U.S. Dist. LEXIS 32844 (S.D.N.Y. 2006) (Likelihood of Confusion) Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir. 2005) (Likelihood of Confusion) Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2004 U.S. Dist. LEXIS 9387 (S.D.N.Y. 2004) (Likelihood of Confusion)

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Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295 (S.D.N.Y. 2004) ( Likelihood of Confusion) (Dilution) Lurzer GMBH v. American Showcase, Inc., 73 F. Supp. 2d 327 (S.D.N.Y. 1998) (Likelihood of Confusion) Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) (Likelihood of Confusion) (False Advertising) MasterCard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485 (S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Masterfoods, USA v. Arcor USA, Inc. and Arcor S.A.I.C., 230 F. Supp. 2d 302 (W.D.N.Y. 2002) (Likelihood of Confusion) Mattel, Inc., v. Robarb’s, Inc., 2001 U.S. Dist. LEXIS 11742 (S.D.N.Y. 2001) (Likelihood of Confusion) Mattel, Inc. v. Robarb’s, Inc., 139 F. Supp. 2d 487 (S.D.N.Y. 2001) (Likelihood of Confusion) Medical Economics Co., Inc. and ME Licensing Corp. v. Prescribing Reference, Inc., 294 F. Supp. 2d 456 (S.D.N.Y. 2003) (Likelihood of Confusion) Metlife, Inc. v. Metropolitan Nat’l Bank, 388 F. Supp. 2d 223 (S.D.N.Y 2005) (Likelihood of Confusion) Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690 (S.D.N.Y. 1999) (Likelihood of Confusion) National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474 (S.D.N.Y. 2002) (Likelihood of Confusion) New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 312 F. Supp. 2d 195 (D. Conn. 2004) (Likelihood of Confusion) New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479 (S.D.N.Y. 1999) (Likelihood of Confusion) Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114 (S.D.N.Y. 1993) (Likelihood of Confusion) (Daubert/Admissibility Issues) Paco Sport, Ltd. v. Paco Rabanne Perfumes. 234 F.3d 1262 (Table): 2000 US App LEXIS 29570 (2d Cir. 2000), designated “Unpublished Opinion.” (Likelihood of Confusion)

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Paco Sport, Ltd. v. Paco Rabanne Perfumes, 86 F. Supp. 2d 305 (S.D.N.Y. 2000) (Likelihood of Confusion) People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173 (D. Conn. 2010) (Secondary Meaning) (Likelihood of Confusion) Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F. Supp. 2d 250 (S.D.N.Y. 2006) (Likelihood of Confusion) Pilot Corp. of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007) (Likelihood of Confusion) Pilot Corp. of America v. Fisher-Price, Inc., 344 F. Supp. 2d 349 (D. Conn. 2004) (Likelihood of Confusion) PRL USA Holdings, Inc. v. United States Polo Ass’n, Inc., 2006 U.S. Dist. LEXIS 46065 (S.D.N.Y. 2006) (Likelihood of Confusion) Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) (Likelihood of Confusion) Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) (Likelihood of Confusion) Star Industries, Inc. v. Bacardi & Co. Ltd., 2003 U.S. Dist. LEXIS 23411 (S.D.N.Y. 2003) (Likelihood of Confusion) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578 (S.D.N.Y. 2005) (Likelihood of Confusion) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2004 U.S. Dist. LEXIS 19239 (S.D.N.Y. 2004) (Likelihood of Confusion) Starter Corp. v. Converse Inc., 170 F.3d 286 (2d Cir. 1999) (Likelihood of Confusion) (Daubert/Admissibility Issues) The Swatch Group (U.S.) Inc. v. Movado Corp., 2003 U.S. Dist. LEXIS 6015 (S.D.N.Y. 2003) (Likelihood of Confusion) THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) THOIP v. Walt Disney Co., 2010 U.S. Dist. LEXIS 82726 (S.D.N.Y. 2010) (Likelihood of Confusion) Tiffany v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (Likelihood of Confusion)

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Tiffany v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) (Likelihood of Confusion) Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296 (S.D.N.Y. 1999) (Secondary Meaning) (Likelihood of Confusion) Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) (Secondary Meaning) (Likelihood of Confusion) Trouble v. The Wet Seal, Inc., 179 F. Supp. 2d 291 (S.D.N.Y. 2001) (Likelihood of Confusion) (Daubert/Admissibility Issues) Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458 (S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion) (Daubert/ Admissibility Issues) Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541 (E.D.N.Y. 2005) (Likelihood of Confusion) (Daubert/Admissibility Issues) Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634 (E.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion) WE Media, Inc. v. Cablevision Systems Corp., 2004 U.S. App. LEXIS 7379 (2d Cir. 2004) (Likelihood of Confusion) WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion) Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005) (Likelihood of Confusion) Winner Intern. LLC v. Omori Enterprises, Inc., 60 F. Supp. 2d 62 (E.D.N.Y. 1999) (Likelihood of Confusion) Third Circuit A&H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 167 F. Supp. 2d 770 (E.D. Pa. 2001) (Likelihood of Confusion) A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 57 F. Supp. 2d 155 (E.D. Pa. 1999) (Likelihood of Confusion) A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 166 F.3d 197 (3d Cir. 1999) (Likelihood of Confusion) The CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775 (D. N.J. 1998) (Likelihood of Confusion)

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Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS 18999 (3d Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2003 U.S. Dist.LEXIS 25977 (W.D. Pa. 2003) (Likelihood of Confusion) (Daubert/Addmissibility Issues) CNB Financial Corp. v. CNB Community Bank, 2004 U.S. Dist. LEXIS 21483 (E.D. Pa. 2004) (Likelihood of Confusion) Componentone, L.L.C. v. Componentart, Inc., 2008 U.S. Dist. LEXIS 87066 (W.D. Pa. 2008) (Likelihood of Confusion) Interstate Bank v. NetBank, Inc., 348 F. Supp. 2d 340 (D. N.J. 2004) (Likelihood of Confusion) Lucent Information Mgmt. Inc. v. Lucent Technologies Inc., 5 F. Supp. 2d 238 (D. Del. 1998) (Likelihood of Confusion) M.D. On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563 (D. N.J. 2005) (Likelihood of Confusion) The Pep Boys Manny, Moe & Jack of California v. The Goodyear Tire & Rubber Co., 2002 U.S. Dist. LEXIS 5925 (E.D. Pa. 2002) (Likelihood of Confusion) Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335 (D. N.J. 2002) (Likelihood of Confusion) (Dilution) Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 2007 U.S. Dist. LEXIS 29377 (E.D. Pa. 2007) (Likelihood of Confusion) Fourth Circuit Ale House Mgmt. V. Raleigh Ale House, 2006 U.S. Dist. LEXIS 98819 (E.D. N.C. 2006) CareFirst of Maryland, Inc. v. First Care, P.C., 422 F. Supp. 2d 592 (E.D. Va. 2006) (Likelihood of Confusion) CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588 (4th Cir. 2006) (Likelihood of Confusion) (Dilution) CareFirst of Maryland, Inc. v. First Care, P.C., 350 F. Supp. 2d 714 (E.D. Va. 2004) (Likelihood of Confusion) Community First Bank v. Community Banks, 360 F. Supp. 2d 716 (D. Md. 2005) (Likelihood of Confusion)

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The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719 (D. Md. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Georgia Pacific Consumer Products, LP v. Von Drehle Corp., 618 F.3d 441 (4th Cir. 2010) (Likelihood of Confusion) Giant Brands, Inc. v. Giant Eagle, Inc., 228 F. Supp. 2d 646 (D. Md. 2002) (Likelihood of Confusion) Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642 (E.D. Va. 2005) (Likelihood of Confusion) Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) (Likelihood of Confusion) (Fame) High Voltage Beverages, LLC v. The Coca-Cola Co., 2009 U.S. Dist. LEXIS 122019 (W.D. N.C. 2009) (Likelihood of Confusion) IDV North America, Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815 (E.D. Va. 1998) (Likelihood of Confusion) The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp. 2d 785 (D. Md. 2001) (Likelihood of Confusion) (Daubert/Admissibility Issues) Lulu Enterprises, Inc. v. N-F Newsite, LLC, 2007 U.S. Dist LEXIS 78034 (E.D. N.C. 2007) (Likelihood of Confusion) Miguel Torres S.A. v. Cantine Mezzacorona S.C.A.R.L., 52 U.S.P.Q.2d 1557 (E.D. Va. 1999) (Likelihood of Confusion) Resorts of Pinehurst Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417 (4th Cir. 1998) (Likelihood of Confusion) Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010) (Likelihood of Confusion) Teaching Co. Ltd. Partnership v. Unapix Entm’t, Inc., 87 F. Supp. 2d 567 (E.D. Va. 2000) (Likelihood of Confusion) X-IT Products, L.L.C. v. Walter Kidde Portable Equipment, Inc., 155 F. Supp. 2d 577 (E.D. Va. 2001) (Likelihood of Confusion) Fifth Circuit Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005) (Likelihood of Confusion) (Dilution)

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Bd. of Supervisors for Louisiana State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (Likelihood of Confusion) Bd. of Supervisors of the Louisiana State Univ. v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006) (Likelihood of Confusion) Brennan’s, Inc. v. Dickie Brennan and Co., Inc., 2002 U.S. Dist. LEXIS 28235 (E.D. La. 2002) (Likelihood of Confusion) Citizens Nat’l Bank of Meridian v. The Citizens Bank of Philadelphia, 157 F. Supp. 2d 713 (S.D. Miss. 2001) (Likelihood of Confusion) Dallas Cowboys Football Club, Ltd. v. America’s Team Properties, Inc., 616 F. Supp. 2d 622 (N.D. Tex. 2009) (Likelihood of Confusion) The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Henley v. Dillard Dep’t Stores, 46 F. Supp. 2d 587 (N.D. Tex. 1999) (Likelihood of Confusion) Ironclad, L.P. v. Poly-America, Inc., 2000 U.S. Dist. LEXIS 10728 (N.D. Tex. 2000) (Likelihood of Confusion) Ironclad, L.P. v. Poly-America, Inc., 1999 U.S. Dist. LEXIS 16265 (N.D. Tex. 1999) (Likelihood of Confusion) KIS, S.A. v. Foto Fantasy, Inc., 240 F. Supp. 2d 608 (N.D. Tex. 2002) (Likelihood of Confusion) Mary Kay, Inc. v. Amy L. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) (Likelihood of Confusion) Oreck Holdings, L.L.C. v. Euro-Pro Corp., 2007 U.S. Dist. LEXIS 5830 (E.D. La. 2007) (Likelihood of Confusion) Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (Secondary Meaning) (Likelihood of Confusion) RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 3528 (N.D. Tex. 2003) (Likelihood of Confusion) RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 1569 (N.D. Tex. 2003) (Likelihood of Confusion)

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Re/Max Int’l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356 (S.D. Tex. 2009) (Likelihood of Confusion) Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Tiffany & Broadway, Inc. v. Commissioner of Patents and Trademarks, 167 F. Supp. 2d 949 (S.D. Tex. 2001) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 2001 U.S. Dist. LEXIS 17468 (S.D. Tex. 2001) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 214 F.3d 658 (5th Cir. 2000) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 103 F. Supp. 2d 935 (S.D. Tex. 1999) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 1998 U.S. Dist. LEXIS 11737 (S.D. Tex. 1998) (Likelihood of Confusion) Sixth Circuit Citizens Banking Corp. v. Citizens Financial Group, Inc., 2009 U.S. App. LEXIS 8366 (6th Cir. (Secondary Meaning) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800 (E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2008 U.S. Dist. LEXIS 547 (E.D. Mich. 2008) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325 (E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) (Likelihood of Confusion) General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (Secondary Meaning) (Likelihood of Confusion) Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841 (M.D. Tenn. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Innovation Ventures, LLC v. N.V.E., Inc., 2010 U.S. Dist. LEXIS 96004 (E.D. Mich. 2010) (Likelihood of Confusion)

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K’arsan Corp. v. Christian Dior Perfumes, Inc., 166 F.3d 1214 (6th Cir. 1998) (Likelihood of Confusion) Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (Likelihood of Confusion) Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 452 F. Supp. 2d 772 (W.D. Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671 (W.D. Ky. 2010) (Likelihood of Confusion) Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454 (E.D. Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 WL 20523 (E.D. Mich. 2006) (Likelihood of Confusion) The Procter & Gamble Co. v. Georgia-Pacific Consumer Products LP, 2009 U.S. Dist. LEXIS 72052 (S.D. Ohio 2009) (Likelihood of Confusion) Rock & Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 71 F. Supp. 2d 755 (N.D. Ohio 1999) (Secondary Meaning) (Likelihood of Confusion) Safe Auto Ins. Co. v. State Automobile Mutual Inc. Co., 2009 U.S. Dist. LEXIS 94859 (S.D. Ohio 2009) (Likelihood of Confusion) Schneider Saddlery Co., Inc. v. Best Shot Pet Products Int’l, LLC, 2009 U.S. Dist. LEXIS 27227 (N.D. Ohio 2009) (Likelihood of Confusion) Volkswagen AG v. Dorling Kindersley Publishing, Inc., 614 F. Supp. 2d 793 (E.D. Mich. 2009) (Likelihood of Confusion) Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Seventh Circuit AM General Corp. and General Motors Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir 2002) (Secondary Meaning) (Likelihood of Confusion) Blue Cross and Blue Shield Ass’n v. American Exp. Co., 1999 U.S. Dist. LEXIS 17994 (N.D. Ill. 1999) (Likelihood of Confusion) Bobak Sausage Co. v. A&J Seven Bridges, Inc., 2010 U.S. Dist. LEXIS 40737 (N.D. Ill. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)

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Breuer Electric Mfg. Co. v. Hoover Co., 48 U.S.P.Q.2d 1705 (N.D. Ill. 1998) (Likelihood of Confusion) Chattanoga Mfg., Inc. v. Nike, Inc., 140 F. Supp. 2d 917 (N.D. Ill. 2001) (Likelihood of Confusion) Eco Mfg. LLC v. Honeywell Int’l, Inc., 2003 U.S. Dist. LEXIS 11384 (S.D. Ind. 2003) (Likelihood of Confusion) Fort James Corp. v. Kimberly-Clark Tissue Co., 1999 U.S. Dist. LEXIS 16321 (N.D. Ill. 1999) (Likelihood of Confusion) Frank M. Sullivan III v. CBS Corp., 2004 U.S. App. LEXIS 20062 (7th Cir. 2004) (Likelihood of Confusion) Frank M. Sullivan, III v. CBS Corp., 2002 U.S. Dist. LEXIS 6625 (N.D. Ill. 2002) (Likelihood of Confusion) Georgia-Pacific Consumer Prod. LP v. Kimberly-Clark Corp., 2010 31540 (N.D. Ill. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007) (Likelihood of Confusion) Invisible Fence, Inc. v. Perimeter Technologies, Inc., 2007 U.S. Dist. LEXIS 6664 (N.D. Ind. 2007) (Likelihood of Confusion) Miche Bag, LLC v. The Marshall Group, 2010 U.S. Dist. LEXIS 59900 (N.D. Ind. 2010) (Likelihood of Confusion) National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc., 57 F. Supp. 2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution) (Daubert/ Admissibility Issues) National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc., 16 F. Supp. 2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution) (Daubert/ Admissibility Issues) Native American Arts v. Earthdweller, Ltd. and The Waldron Corp., 2002 U.S. Dist. LEXIS 9750 (N.D. Ill. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Navistar Int’l Transportation Corp. v. Freightliner Corp., 52 U.S.P.Q.2d 1074 (N.D. Ill. 1998) (Likelihood of Confusion)

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Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896 (S.D. Ind. 2004) (Likelihood of Confusion) (Patent) Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill. 1998) (Secondary Meaning) (Likelihood of Confusion) Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 22246 (N.D. Ill. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951 (N.D. Ill. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002) (Likelihood of Confusion) Simon Property Group, L.P. v. mySimon, Inc., 2001 U.S. Dist. LEXIS 852 (S.D. Ind. 2001) (Likelihood of Confusion) Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033 (S.D. Ind. 2000) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sunstar, Inc. v. Alberto-Culver Co., Inc., 2007 U.S. Dist. LEXIS 62135 (N.D. Ill. 2007) (Likelihood of Confusion) V & S Vin & Sprit Aktiebolag v. Cracovia Brands, Inc., 2004 U.S. Dist. LEXIS 17 (N.D. Ill. 2004) (Likelihood of Confusion) Eighth Circuit 3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 81094 (D. Minn. 2010) (Likelihood of Confusion) 3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 124672 (D. Minn. 2010) (Likelihood of Confusion) Am. Ass’n for Justice v. The Am. Trial Lawyers Ass’n, 698 F. Supp. 2d 1129 (D. Minn. 2010) (Likelihood of Confusion) Anheuser-Busch, Inc. v. VIP Products, LLC, 2008 U.S Dist. LEXIS 82258 (E.D. Mo. 2008) (Likelihood of Confusion) Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D. Minn. 2008) (Likelihood of Confusion)

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Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 9473 (D. Minn. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 81329 (D. Minn. 2010) (Likelihood of Confusion) Everest Capital Ltd., v. Everest Funds Mgmt., 393 F.3d 755 (8th Cir. 2005) (Likelihood of Confusion) The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 2009 U.S. Dist. LEXIS 82980 (D. S.D. 2009) (Likelihood of Confusion) Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000) (Secondary Meaning) (Likelihood of Confusion) (Dilution) Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001 (8th Cir. 2005) (Secondary Meaning) (Likelihood of Confusion) Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503; 2004 (8th Cir. 2004) (Likelihood of Confusion) Gateway, Inc. v. Companion Products, Inc., 2003 U.S. Dist. LEXIS 21461 (D. S.D. 2003) (Likelihood of Confusion) Gateway, Inc. v. Companion Products, Inc., 320 F. Supp. 2d 912 (D. S.D. 2002) (Likelihood of Confusion) Georgia –Pacific Consumer Products, LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir. 2010) (Likelihood of Confusion) Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS 63774 (W.D. Ark. 2009) (Likelihood of Confusion) Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS 54401 (W.D. Ark. 2009) (Likelihood of Confusion) Graham Webb Int’l v. Helene Curtis Inc., 17 F. Supp. 2d 919 (D. Minn. 1998) (Likelihood of Confusion) Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (8th Cir. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Louis E. Kemp v. Bumble Bee Seafoods, Inc., 398 F.3d 1049 (8th Cir. 2005) (Likelihood of Confusion)

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Louis Kemp v. Bumble Bee Seafoods, Inc., 2002 U.S. Dist. LEXIS 19316 (D. Minn. 2002) (Likelihood of Confusion) Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827 (8th Cir. 1999) (Likelihood of Confusion) Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP and NHL Enterprises, LP, 2002 U.S. Dist. LEXIS 13991 (D. Minn. 2002) (Likelihood of Confusion) (Daubert/ Admissibility Issues) Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist Lexis 17766 (D. Minn. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Ninth Circuit adidas America, Inc. v. Kmart Corp., 2006 U.S. Dist. LEXIS 49766 (D. Or. 2006) (Likelihood of Confusion) adidas America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260 (D. Or. 2008) (Likelihood of Confusion) adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007) (Likelihood of Confusion) (Fame) adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 25141 (D. Or. 2002) (Likelihood of Confusion) adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 19592 (D. Or. 2002) (Likelihood of Confusion) adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 2262 (D. Or. 2002) (Likelihood of Confusion) Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212 (C.D. Cal. 2000) (Likelihood of Confusion) Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998) (Likelihood of Confusion) Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2006 U.S. Dist. LEXIS 97200 (C.D. Cal. 2006) (Likelihood of Confusion) ConsumerInfo.com, Inc. v. Money Mgmt. Int’l, Inc., 2008 U.S. Dist. LEXIS 79303 (C.D. Cal. 2008) (Likelihood of Confusion) CSC Brands LP v. Herdez Corp., 191 F. Supp. 2d 1145 (E.D. Cal. 2001) (Likelihood of Confusion)

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Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051 (E.D. Cal. 2009) (Likelihood of Confusion) Don Henley v. Charles S. Devore, 2010 U.S. Dist. LEXIS 67987 (C.D. Cal. 2010) (Likelihood of Confusion) Duncan McIntosh Co. Inc. v. Newport Dunes Marina LLC, 324 F. Supp. 2d 1078 (C.D. Cal. 2004) (Likelihood of Confusion) E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006) (Likelihood of Confusion) Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. 2007) (Secondary Meaning) (Likelihood of Confusion) Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 15297 (D. Or. 2004) (Likelihood of Confusion) Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 9074 (D. Or. 2004) (Likelihood of Confusion) Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d. 1148 (D. Nev. 2010) (Likelihood of Confusion) Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. Dist. LEXIS 109155 (C.D. Cal. 2010) (Likelihood of Confusion) Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025 (9th Cir. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Fuel Clothing Co., Inc. v. Safari Shirt Co., 2006 U.S. Dist. LEXIS 92052 (D. Or. 2006) (Likelihood of Confusion) Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100 (N.D. Cal. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Google, Inc. v. American Blind & Wallpaper Factory, Inc., 2007 U.S. Dist. LEXIS 32450 (N.D. Cal. 2007) (Likelihood of Confusion) Not for Citation. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, (9th Cir. 2000) (Likelihood of Confusion) Hansen Beverage Co. v. Cytosport, Inc., 2009 U.S. Dist. LEXIS 12058 (C.D. Cal. 2009) (Likelihood of Confusion) Hispanic Broadcasting Corp. v. Educational Media Foundation, 2003 U.S. Dist. LEXIS 24804 (C.D. Cal. 2003) (Likelihood of Confusion)

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Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080 (C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility Issues) Instant Media, Inc. v. Microsoft Corp., 2007 U.S. Dist. LEXIS 61443 (N.D. Cal. 2007) (Likelihood of Confusion) Internet Specialties West, Inc. v. ISPWest, 2006 U.S. Dist. LEXIS 96361 (C.D. Cal. 2006) (Likelihood of Confusion) Joel D. Wallach v. Longevity Network, Ltd., 2006 U.S. Dist. LEXIS 97114 (C.D. Cal. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 98787 (C.D. Cal. 2006) (Secondary Meaning) (Likelihood of Confusion) Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) (Likelihood of Confusion) Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116624 (D. Nev. 2009) (Likelihood of Confusion) Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116622 (D. Nev. 2009) (Likelihood of Confusion) Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159 (C.D. Cal. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary Meaning) (Likelihood of Confusion) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923 (N.D. Cal. 2009) (Likelihood of Confusion) (Fame) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625 (N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution) M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (Likelihood of Confusion) (Daubert/Admissibility Issues) Markwins Beauty Products, Inc. v. Mirage Cosmetics, Inc., No. CV 05-04917 MMM (VBKx) (C.D. Cal. 2005) (Likelihood of Confusion) Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120 (C.D. Cal. 1998) (Likelihood of Confusion)

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Metro-Goldwyn-Mayer Pictures, Inc. v. Mark Brown, 2004 U.S. Dist. LEXIS 29562 (C.D. Cal. 2004) (Likelihood of Confusion) The Nautilus Group, Inc. v. Savvier, Inc., 427 F. Supp. 2d 990 (W.D. Wash. 2006) (Likelihood of Confusion) Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481 (D. Or. 2006) (Likelihood of Confusion) (Dilution) Nissan Motor Co., v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (C.D. Cal. 2000) (Likelihood of Confusion) Oracle Corp. v. Light Reading, Inc., 233 F. Supp. 2d 1228 (N.D. Cal. 2002) (Likelihood of Confusion) PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of Confusion) (Dilution) Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Quia Corp. v. Mattel, Inc., 2010 U.S. Dist. LEXIS 68237 (N.D. Cal. 2010) (Likelihood of Confusion) R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141 (D. Nev. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Rain Bird Corp. v. Hit Products Corp., 2004 U.S. Dist LEXIS 20790 (C.D. Cal. 2004) (Likelihood of Confusion) Red Bull GmbH v. Matador Concepts, Inc., 2006 U.S. Dist. LEXIS 96764 (C.D. Cal. 2006) (Likelihood of Confusion) Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sharper Image Corp. v. Target Corp., 425 F. Supp. 2d 1056 (N.D. Cal. 2006) (Likelihood of Confusion) Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635 (C.D. Cal. 2007) (Likelihood of Confusion) Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660 (D. Or. 2005) (Likelihood of Confusion) (Dilution)

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Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005) (Likelihood of Confusion) Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir. 2002) (Likelihood of Confusion) Thane Int’l Inc. v. Trek Bicycle Corp., 53 U.S.P.Q.2d 1523 (C.D. Cal. 1999) (Likelihood of Confusion) Tokidoki, LLC v. Fortune Dynamic, Inc., 2009 U.S. Dist. LEXIS 65665 (C.D. Cal. 2009) (Likelihood of Confusion) Trovan, Ltd. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7522 (C.D. Cal. 2000) (Likelihood of Confusion) YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195 (C.D. Cal. 2002) (Likelihood of Confusion) Tenth Circuit 1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132389 (D. Utah 2010) (Secondary Meaning) (Likelihood of Confusion) 1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948 (D. Utah 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., 2005 U.S. Dist. LEXIS 31059 (D. Kan. 2005) (Likelihood of Confusion) Big O Tires, Inc. v. Bigfoot 4X4, Inc. and Vulcan Chain and Webbing Products, Inc., 167 F. Supp. 2d 1216 (D. Colo. 2001) (Likelihood of Confusion) General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711 (D. Utah 2010) (Secondary Meaning) (Likelihood of Confusion) Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) Medi-Flex, Inc. v. NicePak Products, Inc., 422 F. Supp. 2d 1242 (D. Kan. 2006) (Likelihood of Confusion) Nestle Prepared Foods Co. v. Pocket Foods Corp., 2006 U.S. Dist. LEXIS 76213 (D. Colo. 2006) (Likelihood of Confusion) Primedia Intertec Corp. v. Technology Marketing Corp., 35 F. Supp. 2d 809 (D. Kan. 1998) (Likelihood of Confusion) (Daubert/Admissibility Issues)

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Sally Beauty Co., Inc., Marianna Imports, Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir 2002) (Likelihood of Confusion) Sara Lee Corp. v. Sycamore Family Bakery Inc., 2009 U.S. Dist. LEXIS 100554 (D. Ut. 2009) (Likelihood of Confusion) Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Eleventh Circuit Alltel Corp. v. Actel Integrated Communications Inc., 42 F. Supp. 2d 1265 (S.D. Ala. 1999) (Likelihood of Confusion) The Bd. of Regents of the Univ. System of Georgia d/b/a The Georgia Institute of Technology v. Buzas Baseball, Inc., d/b/a The Salt Lake Buzz, 176 F. Supp. 2d 1338 (N.D. Ga. 2001) (Likelihood of Confusion) Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999) (Likelihood of Confusion) (Fame/Dilution) Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS 66061 (N.D. Ga. 2010) (Likelihood of Confusion) Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS 82638 (N.D. Ga. 2010) (Likelihood of Confusion) Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO (N.D. Ga. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F. Supp. 2d 1347 (S.D. Fla. 1998) (Likelihood of Confusion) Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 2009 U.S. Dist. LEXIS 120238 (N.D. Ala. 2009) (Likelihood of Confusion)

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Federal Circuit Continental Plastic Containers Inc. v. Owens-Brockway Plastic Products Inc., 141 F.3d 1073 (Fed. Cir. 1998) (Likelihood of Confusion) Leonard Studio Equipment, Inc. v Desmar Corp., 173 F.3d 435 (Table): 1998 WL 712452 (CAFC), designated “Unpublished Disposition” (Fed. Cir. 1998) (Likelihood of Confusion) T.T.A.B. 7-Eleven, Inc. v. Mark D. Morrison, 2008 WL 2385970 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. America Online v. Prabhu Mohapatra, 2004 T.T.A.B. LEXIS 455 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Ava Enterprises, Inc. v. Audio Boss USA, Inc., 2006 T.T.A.B. LEXIS 17 (T.T.A.B. 2006) (Likelihood of Confusion) Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16 T.T.A.B.) (Secondary Meaning) (Likelihood of Confusion) The Black Dog Tavern Co., Inc. v. Elizabeth A. Frechette, 2006 T.T.A.B. LEXIS 835 (T.T.A.B. 2006) (Likelihood of Confusion) In re Borysiewicz, 2004 T.T.A.B. LEXIS 622 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Bridgestone Firestone No. Amer. Tire, LLC v. Federal Corp., 2010 T.T.A.B. LEXIS 294 (T.T.A.B. 2010) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Bridgestone/Firestone North American Tire, LLC v. Silverstone Berhad, 2003 T.T.A.B. LEXIS 142 (T.T.A.B. 2003) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B.. Cartier N.W., In re, 2010 T.T.A.B. LEXIS 337 (T.T.A.B. 2010) (Secondary Meaning) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Chanel, Inc. v. Frank Mauriello, Opposition Nos. 91168097 and 91172654, Cancellation No. 92046246 (T.T.A.B. 2010) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Coty US Inc. and Coty Cosmetics Inc. v. Frontier Cooperative Herbs, 2002 T.T.A.B. LEXIS 144 (T.T.A.B. 2002) (Likelihood of Confusion)

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Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408 (T.T.A.B. 2003) (Likelihood of Confusion) (Fame/Dilution) This disposition is not citable as precedent of the T.T.A.B. E.I. duPont de Nemours and Co. v. duPont Publishing, Inc., 2001 T.T.A.B. LEXIS 740 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. The Guardian Life Ins. Co. of America v. David P. England, 2002 T.T.A.B. LEXIS 625 (T.T.A.B. 2002) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B.. Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 829 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 629 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. iMedica Corp. v. Medica Health Plans, 2007 T.T.A.B. LEXIS 140 (T.T.A.B. 2007) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Kevin T. McCarney dba Poquito Mas v. Una Mas, Inc., 2004 T.T.A.B. LEXIS 51 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. King Bio Pharmaceuticals, Inc. v. King Pharmaceuticals, Inc., 2002 T.T.A.B. LEXIS 280 (T.T.A.B. 2002) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Kohler Co. v. Kohler Homes, 2008 T.T.A.B. LEXIS 551 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Longevity Network, Ltd. v. Joel D. Wallach, 2004 T.T.A.B. LEXIS 171 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Meier’s Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., 2008 T.T.A.B. LEXIS 678 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Missiontrek Ltd. Co. v. Onfolio, Inc., 2005 T.T.A.B. LEXIS 524 (T.T.A.B. 2005) (Likelihood of Confusion) OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274 (T.T.A.B. 2006) (Likelihood of Confusion) This opinion is not citable as a precedent of the T.T.A.B.

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Physicians Health Plan, Inc. v. Michigan HMO Plans, Inc., 1999 T.T.A.B. LEXIS 800 (T.T.A.B. 1000) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 2005 T.T.A.B. LEXIS 184 (T.T.A.B. 2005) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Purl NYC, LLC v. Ellen Rodgers, 2008 T.T.A.B. LEXIS 672 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Sara Lee Corp. v. Amine Mahmoud, 2007 T.T.A.B. LEXIS 147 (T.T.A.B. 2007) (Likelihood of Confusion) This opinion is not a precent of the T.T.A.B. Sara Lee Corp.v. Goldstone Hosiery Co., 2001 T.T.A.B. LEXIS 204 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Sara Lee Corp. v. Kayser-Roth Corp., 2004 T.T.A.B. LEXIS 146 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Starbucks U.S. Brands, LLC v. Marshall S. Ruben, 2006 T.T.A.B. LEXIS 54 (T.T.A.B. 2006) (Likelihood of Confusion) Team Air Express, Inc. v. Alliance Shippers, Inc., 2007 T.T.A.B. LEXIS 110 (T.T.A.B. 2007) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. U S West, Inc. v. Hatten Communications Holding Co., Inc., 2002 T.T.A.B. LEXIS 620 (T.T.A.B. 2002) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B.

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False Advertising Surveys First Circuit Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000) (False Advertising) Second Circuit Auscape Int’l v. National Geographic Society, 409 F. Supp. 2d 235 (S.D.N.Y. 2004) (False Advertising) Braun Inc. v. Optiva Corp., 2000 U.S. Dist. LEXIS 2195 (S.D.N.Y. 2000) (False Advertising) Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 U.S. Dist. LEXIS 14687 (D. Conn.2010) (False Advertising) Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000) (False Advertising) Major League Baseball Properties Inc. v. Pacific Trading Cards Inc., 48 U.S.P.Q.2d 1944 (S.D.N.Y. 1998) (False Advertising) Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) (Likelihood of Confusion) (False Advertising) McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y. 2005) (False Advertising) Miramax Films Corp. v. Columbia Pictures Entm’t Inc., 996 F Supp 294 (S.D.N.Y. 1998) (False Advertising) Mylan Pharmaceuticals, Inc. v. Procter & Gamble Co., 443 F. Supp. 2d 453 (S.D.N.Y. 2006) (False Advertising) Playtex Products, Inc. v. Procter & Gamble Co., 2003 U.S. Dist. LEXIS 8913 (S.D.N.Y. 2003) (False Advertising) Procter & Gamble V. Hoffmann-La Roche, 2006 WL 2588002 (S.D.N.Y. 2006) (False Advertising) (Daubert/Admissibility Issues) Procter & Gamble v. Ultreo, 574 F. Supp. 2d 339 (S.D.N.Y. 2008) (False Advertising) Rexall Sundown, Inc. v. Perrigo Co., 51 F. Supp. 2d 9 (E.D.N.Y. 2009) (False Advertising) (Daubert/Admissibility Issues) Santana Products, Inc. v. Sylvester & Assoc., Ltd., 2006 U.S. Dist. LEXIS 98045 (E.D.N.Y. 2006) (False Advertising)

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Schering Corp. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7071 (S.D.N.Y. 2000) (False Advertising) Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) (False Advertising) Schering Corp. v. Pfizer, Inc., 1999 U.S. Dist. LEXIS 2980 (S.D.N.Y. 1999) (False Advertising) SmithKline Beecham Consumer Healthcare, L.P. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 2001 U.S. Dist. LEXIS 7061 (S.D.N.Y. 2001) (False Advertising) Warner-Lambert Co. v. Schering-Plough Corp., 1991 U.S. Dist. LEXIS 14620 (S.D.N.Y. 1991) (False Advertising) Zeneca Inc. v. Eli Lilly and Co., 1999 U.S. Dist. LEXIS 10852 (S.D.N.Y. 1999) (False Advertising) Third Circuit Astrazeneca LP v. Tap Pharmaceutical Products, Inc., 444 F. Supp 2d. 278 (D. Del. 2006) (False Advertising) (Daubert/Admissibility Issues) Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384 (D. N.J. 2009) (False Advertising) (Daubert/Admissibility Issues) Castrol, Inc. v. Pennzoil Quaker State Co., 169 F. Supp. 2d 332 (D. N.J. 2001) (False Advertising) Castrol, Inc. v. Pennzoil Quaker State Co., 2000 U.S. Dist. LEXIS 15336 (D. N.J. 2000) (False Advertising) Diamond Triumph Auto Glass, Inc. v. Safelite Glass Corp., 441 F. Supp. 2d 695 (M.D. Pa. 2006) (False Advertising) IDT Telecom, Inc. v. CVT Prepaid Solutions, LLC, 2009U.S. Dist. LEXIS 120355 (D. N.J. 2009) (False Advertising) The Joint Stock Society and The Russian American Spirits Co. v. UDV North America, Inc. and Pierre Smirnoff Co., 266 F.3d 164 (3d Cir. 2001) (False Advertising) Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681 (E.D. Pa. 2007) (False Advertising) (Daubert/Admissibility Issues) Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 14780 (E.D. Pa. 2007) (False Advertising)

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Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 290 F.3d 578 (3d Cir. 2002) (False Advertising) Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351 (D. N.J. 2000) (False Advertising) Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 702 F. Supp. 2d 238 (D. Del. 2010) (False Advertising) Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292 F. Supp. 2d 594 (D. N.J. 2003) (False Advertising) Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 266 (D. Del. 2010) (False Advertising) Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 253 (D. Del. 2010) (False Advertising) Fourth Circuit JTH Tax, Inc. v. H&R Block Eastern Tax Services, Inc, 128 F. Supp. 2d 926 (E.D. Va. 2001) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 177 (E.D. Va. 2010) (False Advertising) (Daubert/Admissibility Issues) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18404 (E.D. Va. 2010) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18460 (E.D. Va. 2010) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 120200 (E.D. Va. 2009) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 119755 (E.D. Va. 2009) (False Advertising) Pediamed Pharmaceuticals, Inc. v. Breckenridge Pharmaceutical, Inc., 419 F. Supp. 2d 715 (D. Md. 2006) (False Advertising) (Daubert/Admissibility Issues) The Scotts Co. v. United Industries Corp., 315 F.3d 264 (4th Cir. 2002) (False Advertising)

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Fifth Circuit Healthpoint, Ltd v. Ethex Corp., 2004 U.S. Dist. LEXIS 27500 (W.D. Tex. 2004) (False Advertising) Healthpoint, Ltd. v. Ethex Corp., 273 F. Supp. 2d 817 (W.D. Tex. 2001) (False Advertising) Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22470 (W.D. Tex. 2001) (False Advertising) Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22229 (W.D. Tex. 2001) (False Advertising) Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2006 U.S. Dist. LEXIS 60187 (W.D. Tex. 2006) (False Advertising) (Daubert/Admissibility Issues) Kinetic Concepts, Inc. v. Bluesky Medical Group Inc., 2005 U.S. Dist LEXIS 32353 (W.D. Tex. 2005) (False Advertising) (Dilution) Landmark American Ins. Co. v. Rosie Ray, 2006 U.S. Dist. LEXIS 95517 (W.D. Tex. 2006) False Advertising) Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) (False Advertising) Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 80 F. Supp. 2d 600 (N.D. Tex. 2000) (False Advertising) (Daubert/Admissibility Issues) Scott O’Grady v. Twentieth Century Fox Film Corp., 2003 U.S. Dist LEXIS 24936 (E.D. Tex. 2003) (False Advertising) Sixth Circuit The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15129 (S.D. Ohio 2004) (False Advertising) The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15134 (S.D. Ohio 2004) (False Advertising) Rocky Brands, Inc. v. Red Wing Shoe Co., Inc., 2009 U.S. Dist. LEXIS 122929 (S.D. Ohio 2009) (False Advertising) Static Control Components, Inc. v. Lexmark Int’l, Inc., 2007 U.S. Dist. LEXIS 32489 (E.D. Ky. 2007) (False Advertising)

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Seventh Circuit Hot Wax Inc. v. Turtle Wax Inc., 27 F. Supp. 2d 1043 (N.D. Ill. 1998) (False Advertising) Hot Wax, Inc. v. Warsaw Chemical Co., Inc., 45 F. Supp. 2d 635 (N.D. Ill. 1999) (False Advertising) LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721 (N.D. Ill. 2010) (False Advertising) (Daubert/Admissibility Issues) LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879 (N.D. Ill. 2010) (False Advertising) (Daubert/Admissibility Issues) LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357 (N.D. Ill. 2009) (False Advertising) (Daubert/Admissibility Issues) Mead Johnson & Co. v. Abbott Laboratories, 209 F.3d 1032 (7th Cir. 2000) (False Advertising) Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000) (False Advertising) Mead Johnson & Co. v. Abbott Laboratories, 41 F. Supp. 2d 879 (S.D. Ind. 1999) (False Advertising) Sanfield Inc. v. Finlay Fine Jewelry Corp., 999 F Supp 1102 (N.D. Ill. 1998) (False Advertising) Tylka v. Gerber Products Co., 1999 WL 495126 (N.D. Ill. 1999) (False Advertising) Eighth Circuit American Equity Mortgage, Inc. v. Ray Vinson, Jr. 2005 U.S. Dist. LEXIS 32160 (E.D. Mo. 2005) (False Advertising) (Daubert/Admissiblity Issues) American Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387 (8th Cir. 2004) (False Advertising) Millennium Import Co. v. Sidney Frank Importing Co., Inc., 2004 U.S. Dist LEXIS 11871 (D. Minn. 2004) (False Advertising) Rainbow Play Systems, Inc. v. Backyard Adventure, Inc., 2009 U.S. Dist. LEXIS 93623 (S.D. S.D. 2009) (False Advertising) Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045 (D. Minn. 1999) (False Advertising)

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Ninth Circuit Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 U.S. Dist. LEXIS 115007 (N.D. Cal. 2009) (False Advertising) Campagnolo S.R.L. v. Full Speed Ahead,Inc., 2010 U.S. Dist. LEXIS 46176 (W.D. Wash. 2010) (False Advertising) CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) (False Advertising) Federal Trade Commission v. John Stefanchik, 559 F.3d 924 (9th Cir. 2009) (False Advertising) Hansen Beverage Co. v. Vital Pharmaceutical, Inc., 2010 U.S. Dist. LEXIS 79218 (S.D. Cal. 2010) (False Advertising) Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 2005 U.S Dist. LEXIS 45810 (C.D. Cal. 2005) (False Advertising) (Daubert/Admissibility Issues) Mutual Pharmaceutical Co. v. Ivax Pharmaceuticals, Inc., 459 F. Supp. 2d 925 (C.D. Cal. 2006) (False Advertising) Pom Wonderful LLC v. The Coca Cola Co., 727 F. Supp. 2d 849 (C.D. Cal. 2010) (False Advertising) Trafficschool.com, Inc. v. Edriver, Inc., 633 F. Supp. 2d 1063 (C.D. Cal. 2008) (False Advertising) Tenth Circuit Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 258 F. Supp. 2d 1197 (D. Kan. 2003) (False Advertising) The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah 2008) (False Advertising) (Daubert/Admissibility Issues) Eleventh Circuit BellSouth Advertising & Publishing Corp. v. Lambert Publishing, 45 F. Supp. 2d 1316 (S.D. Ala. 1999) (False Advertising) Hickson Corp. v. Northern Crossarm Co., Inc., 357 F.3d 1256 (11th Cir. 2004) (False Advertising)

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Fame and Dilution Surveys First Circuit Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (D. Mass. 1999) (Fame) Second Circuit Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295 (S.D.N.Y. 2004) ( Likelihood of Confusion) (Dilution) Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 390 F.3d 158 (2d Cir. 2004) (Dilution) Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 2003 U.S. Dist. LEXIS 13981 (S.D.N.Y. 2003) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472 (S.D.N.Y. 2008) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578 (S.D.N.Y. 2005) (Likelihood of Confusion) (Dilution) Third Circuit Binney & Smith v. Rose Art Industries, 2001 U.S. Dist. LEXIS 11827 (E.D. Pa. 2001) (Fame) Hershey Foods Corp. v. Mars, Inc., 998 F Supp 500 (M.D. Pa.1998) (Fame) (Dilution) Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335 (D. N.J. 2002) (Likelihood of Confusion) (Dilution) Fourth Circuit American Mensa, Ltd., v. Inpharmatica, Ltd., 2008 U.S. Dist. LEXIS 99394 (D. Md. 2008) (Fame) CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588 (4th Cir. 2006) (Likelihood of Confusion) (Dilution)

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Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) (Likelihood of Confusion) (Fame) Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development, 170 F.3d 449 (4th Cir. 1999) (Fame) (Dilution) Fifth Circuit Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005) (Likelihood of Confusion) (Dilution) The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008) (Fame) Kinetic Concepts, Inc. v. Bluesky Medical Group Inc., 2005 U.S. Dist LEXIS 32353 (W.D. Tex. 2005) (False Advertising) (Dilution) Sixth Circuit Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790 (W.D. Tenn. 2001) (Dilution) Seventh Circuit National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc., 57 F. Supp. 2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc., 16 F. Supp. 2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Simon Property Group L.P. v. mySimon, Inc., 2000 U.S. Dist. LEXIS 12227 (S.D. Ind. 2000) (Fame) Eighth Circuit Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000) (Secondary Meaning) (Likelihood of Confusion) (Dilution) Ninth Circuit adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007) (Likelihood of Confusion) (Fame) Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (Fame)

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Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (Secondary Meaning) (Fame) Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083 (C.D. Cal. 2000) (Secondary Meaning) (Fame) Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (Dilution) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923 (N.D. Cal. 2009) (Likelihood of Confusion) (Fame) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625 (N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution) M2 Software, Inc. v. Viacom, Inc., 119 F. Supp. 2d 1061 (C.D. Cal. 2000) (Fame) Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481 (D. Or. 2006) (Likelihood of Confusion) (Dilution) Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. 2007) (Dilution) Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966 (E.D. Cal. 2007) (Dilution) Nissan Motor Co., v. Nissan Computer Corp., 2007 U.S. Dist. LEXIS 90487 (C.D. Cal. 2007) (Fame) Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) (Fame) PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of Confusion) (Dilution) Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist. LEXIS 46167 (D. Or. 2005) (Dilution) Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660 (D. Or. 2005) (Likelihood of Confusion) (Dilution) Visa Int’l Service Ass’n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010) (Dilution) Visa Int’l Service Ass’n v. JSL Corp., 590 F. Supp. 2d 1306 (D. Nev. 2008) (Dilution) Visa Int’l Service Ass’n v. JSL Corp., 533 F. Supp. 2d 1089 (D. Nev. 2007) (Fame) Visa Int’l Service Ass’n v. JSL Corp., 2006 U.S. Dist. LEXIS 81923 (D. Nev. 2006) (Dilution) (Daubert/Admissibility Issues)

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Eleventh Circuit Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999) (Likelihood of Confusion) (Fame) Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of Confusion) (Dilution) T.T.A.B. Century 21 Real Estate Corp. v. New Century Services Corp., 2007 T.T.A.B. LEXIS 149 (T.T.A.B. 2007) (Fame) This opinion is not a precedent of the T.T.A.B. Day-Timers, Inc. v. Medley & Associates, Inc., 2001 T.T.A.B. LEXIS 299 (Fame) This opinion is not citable as a precedent of the T.T.A.B. Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408 (T.T.A.B. 2003) (Likelihood of Confusion) (Fame) This disposition is not citable as precedent of the T.T.A.B. Ferrero S.P.A. v. Destileria La Central, S.A., 2000 T.T.A.B. LEXIS 359 (T.T.A.B. 2000) (Fame) This disposition is not citable as a precedent of the T.T.A.B. Google Inc. v. Nikolaus Gubernator, 2009 T.T.A.B. LEXIS 81 (T.T.A.B. 2009) (Fame) This opinion is not a precedent of the T.T.A.B. Google Inc. v. Pivot Design, Inc., 2007 T.T.A.B. LEXIS 183 (T.T.A.B. 2007) (Fame) This opinion is not a precedent of the T.T.A.B. Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) (Fame) (Daubert/Admissibility Issues) Hormel Foods Corp. and Hormel Foods, LLC v. Spam Arrest LLC, 2005 T.T.A.B. LEXIS 144 (T.T.A.B. 2005) (Dilution/Blurring) This disposition is not citable as a precedent of the T.T.A.B. Motion Picture Ass’n of America, Inc. v. Respect Sportswear, Inc., 2005 T.T.A.B. LEXIS 223 (T.T.A.B. 2005) (Fame) This disposition is not citable as a precedent of the T.T.A.B. Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B. 2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of the T.T.A.B. Seagate Technology, Inc. v. Seagate Office Products, Inc., 2000 T.T.A.B. LEXIS 622 (T.T.A.B. 2000) (Fame) This disposition is not citable as precedent of the T.T.A.B. Societe Des Produits Nestle S.A. v. La Cibeles, Inc., 2001 T.T.A.B. LEXIS 93 (T.T.A.B. 2001) (Fame) This disposition is not citable as precedent of the T.T.A.B.

False Endorsement Surveys Tenth Circuit Amazon Inc. v. Cannondale Inc., 56 U.S.P.Q.2d 1568 (D.C. Colo. 2000) (False Endorsement) Geographically Deceptively Misdescriptive Surveys Federal Circuit In re Spirits Int’l, N.V., 563 F.3d 1347 (Fed. Cir. 2009) (Geographically Deceptively Misdescriptive) T.T.A.B. In re Kimpton Hotel & Restaurant Group Inc., 55 U.S.P.Q.2d 1154 (T.T.A.B. 2000) (Geographically Deceptively Misdescriptive) In re Spirits Int’l N.V., 2008 T.T.A.B. 6 (T.T.A.B. 2008) (Geographically Deceptively Misdescriptive Scandalous/Disparaging Marks Surveys D.C. Circuit Pro-Football, Inc. v. Suzan Shown Harjo, 284 F. Supp. 2d 96 (D. D.C. 2003) (Scandalous/Disparaging) T.T.A.B. Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999) (Scandalous/Disparaging) Order Sons of Italy in America v. Memphis Mafia Inc., 52 U.S.P.Q.2d 1364 (T.T.A.B. 1999) (Scandalous/Disparaging) Copyright Surveys Seventh Circuit Ty, Inc. v. Publications Int’l Ltd., 2000 U.S. Dist. LEXIS 15382 (N.D. Ill. 2000) (Copyright) Ninth Circuit A & M Records v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (Copyright)

Other 250

A & M Records v. Napster, Inc., 2000 U.S. Dist. LEXIS 20668 (N.D. Cal. 2000) (Copyright) A & M Records v. Napster, Inc., 114 F. Supp. 2d 896 (N.D. Cal. 2000) (Copyright) A & M Records v. Napster, Inc., 2000 WL 1009483 (N.D. Cal. 2000) (Copyright) Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) (Copyright) Patent Surveys Second Circuit Applera Corp. and Roche Molecular Systems, Inc. v. MJ Research Inc., 389 F. Supp. 2d 344 (D. Conn. 2005) (Patent) Spotless Enterprises, Inc. v. A&E Products Group L.P., 294 F. Supp. 2d 322 (E.D.N.Y. 2003) (Patent) Seventh Circuit Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678 (N.D. Ill. 2010) (Patent) (Daubert/Admissibility Issues) Moen, Inc. v. Foremost Int’l Trading, Inc., 38 F. Supp. 2d 680 (N.D. Ill. 1999) (Patent) (Daubert/Admissibility Issues) PTS Labs LLC v. Abbott Laboratories, 126 F. Supp. 2d 538 (N.D. Ill. 2000) (Patent) Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896 (S.D. Ind. 2004) (Likelihood of Confusion) (Patent) D.C. Circuit Winner InternatioInt’lnal Royalty Corp. v. Wang, 11 F. Supp. 2d 18 (D. D.C. 1998) (Patent) Federal Circuit Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (Patent Infringement) Breach of Contract Fifth Circuit MAC Sales, Inc. v. E.I. du Pont de Nemours & Co., 1996 WL 109289 (E.D. La. 1996) (Breach of Contract) (Daubert/Admissibility Issues)

Other 251

First Amendment D.C. Circuit Avocados Plus Inc. v. Mike Johanns, 2007 U.S. Dist. LEXIS 4572 (D. D.C. 2007) (First Amendment) Avocados Plus Inc. v. Mike Johanns, 421 F. Supp. 2d 45 (D. D.C. 2006) (First Amendment)

Daubert 252

Daubert/Admissibility Issues First Circuit The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221 (D. R.I. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933 (D. R.I. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. Puerto Rico 2004) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Second Circuit Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334 (S.D.N.Y. 1995) (Likelihood of Confusion) (Daubert/Admissibility Issues) Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335 (E.D.N.Y. 2000) (Likelihood of Confusion) (Daubert/Admissibility Issues) Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347 (W.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Dennis F. Gross, M.D. v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457 (S.D.N.Y. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320 (S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/ Admissibility Issues) Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)

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MasterCard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485 (S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114 (S.D.N.Y. 1993) (Likelihood of Confusion) (Daubert/Admissibility Issues) Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002 (S.D.N.Y. 2006) (False Advertising) (Daubert/Admissibility Issues) Rexall Sundown, Inc. v Perrigo Co., 651 F. Supp. 2d 9 (E.D.N.Y. 2009) (False Advertising) (Daubert/Admissibility Issues) Starter Corp. v. Converse, Inc., 170 F.3d 286 (2d Cir. 1999) (Likelihood of Confusion) (Daubert/Admissibility Issues) THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Trouble v. The Wet Seal, Inc., 179 F. Supp.2d 291 (S.D.N.Y. 2001) (Likelihood of Confusion) (Daubert/Admissibility Issues) Victoria’s Secret Stores Brand Mgmt., Inc. v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458 (S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541 (E.D.N.Y. 2005) (Likelihood of Confusion) (Daubert/Admissibility Issues) Third Circuit Astrazeneca LP v. Tap Pharmaceutical Products, Inc., 444 F. Supp 2d. 278 (D. Del. 2006) (False Advertising) (Daubert/Admissibility Issues) Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384 (D. N.J. 2009) (False Advertising) (Daubert/Admissibility Issues) Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS 18999 (3d Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2003 U.S. Dist.LEXIS 25977 (W.D. Pa. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040 (D. N.J. 2003) (Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues)

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J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358 (D. N.J. 2002) (Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues) Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681 (E.D. Pa. 2007) (False Advertising (Daubert/Admissibility Issues) Fourth Circuit The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719 (D. Md. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Dick’s Sporting Goods, Inc. v. Dick’s Clothing & Sporting Goods, Inc., 188 F.3d 501 (Table): 1999 WL 639165 (4th Cir. 1999), designated “Unpublished Disposition” (Secondary Meaning) (Daubert/Admissibility Issues) The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp.2d 785 (D. Md. 2001) (Likelihood of Confusion) (Daubert/Admissibility Issues) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 177 (E.D. Va. 2010) (False Advertising) (Daubert/Admissibility Issues) Pediamed Pharmaceuticals, Inc. v. Breckenridge Pharmaceutical, Inc., 419 F. Supp. 2d 715 (D. Md. 2006) (False Advertising) (Daubert/Admissibility Issues) Fifth Circuit The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 2007 U.S. Dist. LEXIS 96129 (W.D. Tex. 2007) (Daubert/Admissibility Issues) Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas Subsidiary, 2006 U.S. Dist. LEXIS 9752 (N.D. Tex. 2006) (Secondary Meaning) (Daubert/Admissibility Issues) The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist. LEXIS 23691 (N.D. Tex. 2004) (Secondary Meaning) (Daubert/Admissibility Issues) Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2006 U.S. Dist. LEXIS 60187 (W.D. Tex. 2006) (False Advertising) (Daubert/Admissibility Issues) MAC Sales, Inc. v. E.I. du Pont de Nemours & Co., 1996 WL 109289 (E.D. La. 1996) (Breach of Contract) (Daubert/Admissibility Issues)

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Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 80 F. Supp.2d 600 (N.D. Tex. 2000) (False Advertising) (Daubert/Admissibility Issues) Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sixth Circuit Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325 (E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841 (M.D. Tenn. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 452 F. Supp. 2d 772 (W.D. Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454 (E.D. Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist. LEXIS 1378 (W.D. Mich. 2006) (Secondary Meaning) (Daubert/Admissibility Issues) Seventh Circuit Bobak Sausage Co. v. A&J Seven Bridges, Inc., 2010 U.S. Dist. LEXIS 40737 (N.D. Ill. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678 (N.D. Ill. 2010) (Patent) (Daubert/Admissibility Issues) Georgia-Pacific Consumer Prod. LP v. Kimberly-Clark Corp., 2010 31540 (N.D. Ill. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369 (N.D. Ill. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721 (N.D. Ill. 2010) (False Advertising) (Daubert/Admissibility Issues) LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879 (N.D. Ill. 2010) (False Advertising) (Daubert/Admissibility Issues)

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LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357 (N.D. Ill. 2009) (False Advertising) (Daubert/Admissibility Issues) Moen Inc. v. Foremost Int’l Trading, Inc., 38 F. Supp.2d 680 (N.D. Ill. 1999) (Patent) (Daubert/Admissibility Issues) National Football League Properties, Inc. v. Prostyle, Inc., 57 F. Supp.2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) National Football League Properties, Inc. v. Prostyle, Inc., 16 F. Supp.2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Native American Arts v. Earthdweller, Ltd., 2002 U.S. Dist. Lexis 9750 (N.D. Ill. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 22246 (N.D. Ill. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951 (N.D. Ill. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp.2d 1033 (S.D. Ind. 2000) (Likelihood of Confusion) (Daubert/Admissibility Issues) Eighth Circuit American Equity Mortgage, Inc. v. Ray Vinson, Jr., 2005 U.S. Dist. LEXIS 32160 (E.D. Mo. 2005) (False Advertising) (Daubert/Admissibility Issues) Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 9473 (D. Minn. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (8th Cir. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP and NHL Enterprises, LP, 2002 U.S. Dist. LEXIS 13991 (D. Minn. 2002) (Likelihood of Confusion) (Daubert/ Admissibility Issues) Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist Lexis 17766 (D. Minn. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Ninth Circuit Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708 (N.D. Cal. 2004) (Secondary Meaning) (Daubert/Admissibility Issues)

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Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025 (9th Cir. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100 (N.D. Cal. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 2005 U.S Dist. LEXIS 45810 (C.D. Cal. 2005) (False Advertising) (Daubert/Admissibility Issues) Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080 (C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility Issues) Joel D. Wallach v. Longevity Network, Ltd., 2006 U.S. Dist. LEXIS 97114 (C.D. Cal. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159 (C.D. Cal. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (Likelihood of Confusion) (Daubert/Admissibility Issues) Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141 (D. Nev. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp.2d 1177 (C.D. Cal. 2001) (Secondary Meaning) (Daubert/Admissibility Issues) Visa Int’l Service Ass’n v. JSL Corp., 2006 U.S. Dist. LEXIS 81923 (D. Nev. 2006) (Dilution) (Daubert/Admissibility Issues) Tenth Circuit 1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948 (D. Utah 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues)

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Primedia Intertec Corp. v. Technology Marketing Corp., 35 F. Supp.2d 809 (D. Kan. 1998) (Likelihood of Confusion) (Daubert/Admissibility Issues) The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah 2008) (False Advertising) (Daubert/Admissibility Issues) Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454 (D. Kan. 1996) (Secondary Meaning) (Daubert/Admissibility Issues) Eleventh Circuit Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360 (N.D. Ga. 2010) (Secondary Meaning) (Daubert/Admissibility Issues) Hi Ltd. v. Winghouse of Florida, 2004 U.S. Dist LEXIS 30687, (M.D. Fla. 2004) (Daubert/Admissibility Issue Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO (ND Ga. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565 (N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues) Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Trilink Saw Chain, LLC v. Blount, Inc., 583 F. Supp. 2d 1293 (N.D. Ga. 2008) (Secondary Meaning) (Daubert/Admissibility Issues) T.T.A.B. Arrow Trading Co., Inc. v. Victorinox A.G., 2000 T.T.A.B. LEXIS 202 (T.T.A.B. 2000) This disposition is not citable as precedent of the T.T.A.B. (Genericness) (Daubert/Admissibility Issues) Hard Rock Café Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) (Fame) (Daubert/Admissibility Issues)

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Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B. 2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of the T.T.A.B.

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BIBLIOGRAPHY INTELLECTUAL PROPERTY SURVEYS: BY CIRCUIT This appendix contains citations, by Circuit, for all identified published opinions from January 1998 through December 2010, in which survey evidence was referenced.

First Circuit Anheuser-Busch, Inc. v. Caught-on-Bleu, Inc., 288 F. Supp. 2d 105 (D. N.H. 2003) (Likelihood of Confusion) Bay State Savings Bank v. Baystate Financial Services, LLC, 2007 U.S. Dist. LEXIS 27148 (D. Mass. 2007) (Secondary Meaning) The Beacon Mutual Ins. Co. v. Onebeacon Ins. Group, 376 F. Supp. 2d 251 (D. R.I. 2005) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 376 F.3d 8 (1st Cir. 2004) (Secondary Meaning) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 290 F. Supp. 2d 241 (D. R.I. 2003) (Secondary Meaning) (Likelihood of Confusion) The Beacon Mutual Ins. Co. v. OneBeacon Ins. Group, 253 F. Supp. 2d 221 (D. R.I. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112 (1st Cir. 2006) (Likelihood of Confusion) Borinquen Biscuit Corp. v. M.V. Trading Corp., 2005 U.S. Dist. LEXIS 41452 (D. P.R. 2005) (Likelihood of Confusion) Carroll Shelby v. Superformance Int’l, Inc., 2006 U.S. App. LEXIS 1096 (1st Cir. 2006) (Secondary Meaning) Carroll Shelby Licensing, Inc. v. Superformance Int’l., Inc., 251 F. Supp. 2d 983 (D. Mass. 2002) (Secondary Meaning) Clorox Co. Puerto Rico v. Proctor & Gamble Commercial Co., 228 F.3d 24 (1st Cir. 2000) (False Advertising) EMC Corp. v. Hewlett-Packard Co., 59 F. Supp. 2d 147 (D. Mass. 1999) (Likelihood of Confusion)

First Circuit 261

Fibermark, Inc. v. Merrimac Paper Co., Inc., 2003 U.S. Dist. LEXIS 26866 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) Hasbro, Inc. v. Clue Computing, Inc., 66 F. Supp. 2d 117 (D. Mass. 1999) (Fame) Hasbro, Inc. v. MGA Entm’t, Inc., 497 F. Supp. 2d 337 (D. R.I. 2007) (Genericness) I.P. Lund Trading ApS and Kroin Inc. v. Kohler Co. and Robern, Inc., 118 F. Supp. 2d 92 (D. Mass. 2000) (Secondary Meaning) Mark Bric Display Corp. v. Joseph Struhl Co., Inc., 2003 U.S. Dist. LEXIS 12933 (D. R.I. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) McNeil-PPC, Inc. v. Merisant Co., 2004 U.S. Dist. LEXIS 27733 (D. P.R. 2004) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissiblity Issues) The Straumann Co. v. Lifecore Biomedical Inc., 278 F. Supp. 2d 130 (D. Mass. 2003) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Yankee Spirits, Inc. v. Gasbarro, 1998 U.S. Dist. LEXIS 22159 (D. Mass. 1998) (Secondary Meaning)

Second Circuit 262

Second Circuit 1-800 Contacts, Inc. v. Whenu.Com, Inc. and Vision Direct, 414 F.3d 400 (2d Cir. 2005) (Likelihood of Confusion) 1-800 Contacts, Inc. v. WhenU.com and Vision Direct, Inc., 309 F. Supp. 2d 467 (S.D.N.Y. 2003) (Likelihood of Confusion) 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 447 F. Supp. 2d 266 (S.D.N.Y. 2006) (Likelihood of Confusion) 24 Hour Fitness USA, Inc. v. 24/7 Tribeca Fitness, LLC, 2005 U.S. Dist. LEXIS 7462 (S.D.N.Y. 2005) (Likelihood of Confusion) Applera Corp. and Roche Molecular Systems, Inc. v. MJ Research Inc., 389 F. Supp. 2d 344 (D. Conn. 2005) (Patent) Arche, Inc. v. Azaleia, U.S.A., Inc., 882 F. Supp. 334 (S.D.N.Y. 1995) (Likelihood of Confusion) (Daubert/Admissibility Issues) Auscape Int’l v. National Geographic Society, 409 F. Supp. 2d 235 (S.D.N.Y. 2004) (False Advertising) Aztar Corp. v. NY Entm’t, LLC, 15 F. Supp. 2d 252 (E.D.N.Y. 1998) (Likelihood of Confusion) Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 2000 U.S. Dist. LEXIS 19852 (E.D.N.Y. 2000) (Likelihood of Confusion) Bacardi & Co. Ltd. v. New York Lighter Co., Inc., 54 U.S.P.Q.2d 1335 (E.D.N.Y. 2000) (Likelihood of Confusion) (Daubert/Admissibility Issues) Bear U.S.A., Inc. v. Kim, 71 F. Supp. 2d 237 (S.D.N.Y. 1999) (Likelihood of Confusion) Beverage Marketing USA, Inc. v. South Beach Beverage Corp., 2000 U.S. Dist. LEXIS 16504 (S.D.N.Y. 2000) (Likelihood of Confusion) BIC Corp.s and Wite-Out Products, Inc. v. Far Eastern Source Corp., 2000 U.S. Dist. LEXIS 18226 (S.D.N.Y. 2000) (Secondary Meaning) Braun Inc. v. Optiva Corp., 2000 U.S. Dist. LEXIS 2195 (S.D.N.Y. 2000) (False Advertising) Brockmeyer v. The Hearst Corp., 248 F. Supp. 2d 281 (S.D.N.Y. 2003) (Likelihood of Confusion) Cache, Inc. v. M.Z. Berger & Co., 2001 U.S. Dist. LEXIS 226 (S.D.N.Y. 2001) (Likelihood of Confusion)

Second Circuit 263

Cartier, Inc. v. Four Star Jewelry Creations, Inc., 348 F. Supp. 2d 217 (S.D.N.Y. 2004) (Secondary Meaning) Cartier, Inc. v. Four Star Jewelry Creations, Inc., 2003 U.S. Dist. LEXIS 16887 (S.D.N.Y. 2003) (Secondary Meaning) Cartier v. Samo’s Sons, Inc., 2005 U.S. Dist. LEXIS 23395 (S.D.N.Y. 2005) (Secondary Meaning) Cartier, Inc. v. Sardell Jewelry, Inc., 2008 U.S. App. LEXIS 19277 (2d Cir. 2008) (Secondary Meaning) Coach, Inc. v. We Care Trading Co., Inc., 2002 U.S. App. LEXIS 28143 (2d Cir. 2002) (Secondary Meaning) Coach, Inc. v. We Care Trading Co., Inc., 2001 U.S. Dist. LEXIS 9879 (S.D.N.Y. 2001) (Secondary Meaning) Conopco, Inc. v. Cosmair, Inc., 49 F. Supp. 2d 242 (S.D.N.Y. 1999) (Likelihood of Confusion) Constellation Brands, Inc. v. Arbor Hills Associates, Inc., 535 F. Supp. 2d 347 (W.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Cumberland Packing Corp. v. Monsanto Co., 140 F. Supp. 2d 241 (E.D.N.Y. 2001) (Likelihood of Confusion) Cumberland Packing Corp. v. Monsanto Co., 32 F. Supp. 2d 561 (E.D.N.Y. 1999) (Likelihood of Confusion) Deere & Co. v. MTD Holdings Inc., 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Dennis F. Gross, M.D. v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175 (S.D.N.Y. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Doctor’s Associates, Inc. v. QIP Holder LLC, 2010 U.S. Dist. LEXIS 14687 (D. Conn. 2010) (False Advertising) Elements/Jill Schwartz, Inc. v. Gloriosa Co. and Gloria Pacosa, 2002 U.S. Dist. LEXIS 12669 (S.D.N.Y. 2002) (Likelihood of Confusion) Empresa Cubana Del Tabaco d.b.a. Cubatabaco v. Culbro Corp. and General Cigar Co., Inc., 2004 U.S. Dist. LEXIS 4935 (S.D.N.Y. 2004) (Likelihood of Confusion)

Second Circuit 264

First Nat’l Bank of Omaha, Inc. v. MasterCard Int’l Inc., 2004 U.S. Dist. LEXIS 13162 (S.D.N.Y. 2004) (Likelihood of Confusion) Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 228 F. Supp. 2d 399 (S.D.N.Y. 2002) (Likelihood of Confusion) Friesland Brands, B.V. v. Vietnam Nat’l Milk Co., 221 F. Supp. 2d 457 (S.D.N.Y. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) GMA Accessories, Inc. v. Croscill, Inc., 2008 U.S. Dist. LEXIS 16052 (S.D.N.Y. 2008) (Likelihood of Confusion) Greenpoint Financial Corp. v. Sperry & Hutchinson Co., Inc., and S & H Greenpoints.com, Inc., 116 F. Supp. 2d 405 (S.D.N.Y. 2000) (Secondary Meaning) Guinness United Distillers & Vintners B.V. v. Anheuser-Busch, Inc., 64 U.S.P.Q.2d 1039 (S.D.N.Y. 2002) (Likelihood of Confusion) Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 2004 U.S. Dist. LEXIS 19278 (D. Vt. 2004) (Descriptiveness) Harland A. Macia, III, d/b/a Catamount Software v. Microsoft Corp., 327 F. Supp. 2d 278 (D. Vt. 2003) (Descriptiveness) Havana Club Holding, S.A. v. Galleon S.A., 203 F.3d 116 (2d Cir. 2000) (False Advertising) Hermès Int’l v. Lederer de Paris Fifth Avenue Inc., 50 F. Supp. 2d 212 (S.D.N.Y. 1999) (Likelihood of Confusion) Imig, Inc. v. Electrolux Home Care Products, Ltd., 2008 U.S. Dist. LEXIS 25478 (E.D.N.Y. 2008) (Secondary Meaning) Imig, Inc. v. Electrolux Home Care Products, Ltd., 2007 U.S. Dist. LEXIS 20530 (E.D.N.Y. 2007) (Secondary Meaning) Johnson & Johnson v. Actavis Group, 2008 U.S. Dist. LEXIS 5242 (S.D.N.Y. 2008) (Secondary Meaning) (Likelihood of Confusion) Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 64393 (S.D.N.Y. 2006) (Likelihood of Confusion) Juicy Couture, Inc. v. L’Oreal USA, Inc., 2006 U.S. Dist. LEXIS 20787 (S.D.N.Y. 2006) (Likelihood of Confusion) Kargo Global,Inc. v. Advance Magazine Publishers, Inc., 2007 U.S. Dist. LEXIS 57320 (S.D.N.Y. 2007) (Secondary Meaning) (Likelihood of Confusion) (Daubert/

Second Circuit 265

Admissibility Issues) La Cibeles, Inc. v. Adipar, Ltd., 2000 U.S. Dist. LEXIS 12676 (S.D.N.Y. 2000) (Likelihood of Confusion) Landscape Forms, Inc. v. Columbia Cascade Co., 117 F. Supp. 2d 360 (S.D.N.Y. 2000) (Likelihood of Confusion) Louis Vuitton Malletier v. Dooney & Bourke, Inc., 525 F. Supp. 2d 558 (S.D.N.Y. 2007) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2006 U.S. Dist. LEXIS 32844 (S.D.N.Y. 2006) (Likelihood of Confusion) Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532 (2d Cir. 2005) (Likelihood of Confusion) Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 2004 U.S. Dist. LEXIS 9387 (S.D.N.Y. 2004) (Likelihood of Confusion) Louis Vuitton Malletier v. Dooney & Bourke, Inc., 2004 U.S. Dist. LEXIS 17295 (S.D.N.Y. 2004) ( Likelihood of Confusion) (Dilution) Lurzer GMBH v. American Showcase, Inc., 73 F. Supp. 2d 327 (S.D.N.Y. 1998) (Likelihood of Confusion) Major League Baseball Properties Inc. v. Pacific Trading Cards Inc., 48 U.S.P.Q.2d 1944 (S.D.N.Y. 1998) (False Advertising) Malaco Leaf, AB v. Promotion in Motion, Inc., 287 F. Supp. 2d 355 (S.D.N.Y. 2003) (Likelihood of Confusion) (False Advertising) MasterCard Int’l, Inc. v. First Nat’l Bank of Omaha, Inc., 2004 U.S. Dist. LEXIS 2485 (S.D.N.Y. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Masterfoods, USA v. Arcor USA, Inc. and Arcor S.A.I.C., 230 F. Supp. 2d 302 (W.D.N.Y. 2002) (Likelihood of Confusion) Mattel, Inc., v. Robarb’s, Inc., 2001 U.S. Dist. LEXIS 11742 (S.D.N.Y. 2001) (Likelihood of Confusion) Mattel, Inc. v. Robarb’s, Inc., 139 F. Supp. 2d 487 (S.D.N.Y. 2001) (Likelihood of Confusion) McNeil-PPC, Inc. v. Pfizer Inc., 351 F. Supp. 2d 226 (S.D.N.Y. 2005) (False Advertising)

Second Circuit 266

Medical Economics Co., Inc. and ME Licensing Corp. v. Prescribing Reference, Inc., 294 F. Supp. 2d 456 (S.D.N.Y. 2003) (Likelihood of Confusion) Metlife, Inc. v. Metropolitan Nat’l Bank, 388 F. Supp. 2d 223 (S.D.N.Y 2005) (Likelihood of Confusion) Miramax Films Corp. v. Columbia Pictures Entm’t Inc., 996 F Supp 294 (S.D.N.Y. 1998) (False Advertising) Mylan Pharmaceuticals, Inc. v. Procter & Gamble Co., 443 F. Supp. 2d 453 (S.D.N.Y. 2006) (False Advertising) Nabisco, Inc. v. PF Brands, Inc. and Pepperidge Farm, Inc., 50 F. Supp. 2d 188 (S.D.N.Y. 1999) (Secondary Meaning) Nabisco v. Warner-Lambert Co., 32 F. Supp. 2d 690 (S.D.N.Y. 1999) (Likelihood of Confusion) National Distillers Products Co., LLC v. Refreshment Brands, Inc., 198 F. Supp. 2d 474 (S.D.N.Y. 2002) (Likelihood of Confusion) New Colt Holding Corp. v. RJG Holdings of Florida, Inc., 312 F. Supp. 2d 195 (D. Conn. 2004) (Likelihood of Confusion) New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 69 F. Supp. 2d 479 (S.D.N.Y. 1999) (Likelihood of Confusion) Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 828 F. Supp. 1114 (S.D.N.Y. 1993) (Likelihood of Confusion) (Daubert/Admissibility Issues) Paco Sport, Ltd. v. Paco Rabanne Perfumes, 234 F.3d 1262 (Table): 2000 US App LEXIS 29570 (2d Cir. 2000), designated “Unpublished Opinion.” (Likelihood of Confusion) Paco Sport, Ltd. v. Paco Rabanne Perfumes, 86 F. Supp. 2d 305 (S.D.N.Y. 2000) (Likelihood of Confusion) People’s United Bank v. Peoplesbank, 2010 U.S. Dist. LEXIS 60173 (D. Conn. 2010) (Secondary Meaning) (Likelihood of Confusion) Pfizer, Inc. v. Arye Sachs, 2009 U.S. Dist. LEXIS 81188 (S.D.N.Y. 2009) (Genericness) Phillips-Van Heusen Corp. v. Calvin Clothing Co., Inc., 444 F. Supp. 2d 250 (S.D.N.Y. 2006) (Likelihood of Confusion) Pilates, Inc. v. Current Concepts, Inc., 120 F. Supp. 2d 286 (S.D.N.Y. 2000) (Genericness)

Second Circuit 267

Pilot Corp. of America v. Fisher-Price, Inc., 501 F. Supp. 2d 292 (D. Conn. 2007) (Likelihood of Confusion) Pilot Corp. of America v. Fisher-Price, Inc. and Mattel, Inc., 344 F. Supp. 2d 349 (D. Conn. 2004) (Likelihood of Confusion) Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 390 F.3d 158 (2d Cir. 2004) (Dilution) Playtex Products, Inc. v. Georgia-Pacific Inc. and Fort James Operating Co., 2003 U.S. Dist. LEXIS 13981 (S.D.N.Y. 2003) (Dilution) Playtex Products, Inc. v. Procter & Gamble Co., 2003 U.S. Dist. LEXIS 8913 (S.D.N.Y. 2003) (False Advertising) PRL USA Holdings, Inc. v. United States Polo Association, Inc., 2006 U.S. Dist. LEXIS 46065 (S.D.N.Y. 2006) (Likelihood of Confusion) Procter & Gamble v. Hoffmann-La Roche, 2006 WL 2588002 (S.D.N.Y. 2006) (False Advertising) (Daubert/Admissibility Issues) Procter & Gamble v. Ultreo, 574 F. Supp. 2d 339 (S.D.N.Y. 2008) (False Advertising) Rexall Sundown, Inc. v. Perrigo Co., 51 F. Supp. 2d 9 (E.D.N.Y. 2009) False Advertising) (Daubert/Admissibility Issues) Rush Industries, Inc. v. Garnier LLC, 496 F. Supp. 2d 220 (E.D.N.Y. 2007) (Likelihood of Confusion) Santana Products, Inc. v. Sylvester & Assoc., Ltd., 2006 U.S. Dist. LEXIS 98045 (E.D.N.Y. 2006) (False Advertising) Schering Corp. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7071 (S.D.N.Y. 2000) (False Advertising) Schering Corp. v. Pfizer Inc., 189 F.3d 218 (2d Cir. 1999) (False Advertising) Schering Corp. v. Pfizer, Inc., 1999 U.S. Dist. LEXIS 2980 (S.D.N.Y. 1999) (False Advertising) SmithKline Beecham Consumer Healthcare, L.P. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 2001 U.S. Dist. LEXIS 7061 (S.D.N.Y. 2001) (False Advertising) Spotless Enterprises, Inc. v. A&E Products Group L.P., 294 F. Supp. 2d 322 (E.D.N.Y. 2003) (Patent) Star Industries, Inc. v. Bacardi & Co. Ltd., 412 F.3d 373 (2d Cir. 2005) (Likelihood of Confusion)

Second Circuit 268

Star Industries, Inc. v. Bacardi & Co. Ltd. Corp., 2003 U.S. Dist. LEXIS 23411 (S.D.N.Y. 2003) (Likelihood of Confusion) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472 (S.D.N.Y. 2008) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2005 U.S. Dist. LEXIS 35578 (S.D.N.Y. 2005) (Likelihood of Confusion) (Dilution) Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2004 U.S. Dist LEXIS 19239 (S.D.N.Y. 2004) (Likelihood of Confusion) Starter Corp. v. Converse Inc., 170 F.3d 286 (2d Cir. 1999) (Likelihood of Confusion) (Daubert/Admissibility Issues) The Swatch Group (U.S.) Inc. v. Movado Corp., 2003 U.S. Dist. LEXIS 6015 (S.D.N.Y. 2003) (Likelihood of Confusion) THOIP v. Walt Disney Co., 690 F. Supp. 2d 218 (S.D.N.Y. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) THOIP v. Walt Disney Co., 2010 U.S. Dist. LEXIS 82726 (S.D.N.Y. 2010) (Likelihood of Confusion) Tiffany v. eBay, Inc., 600 F.3d 93 (2d Cir. 2010) (Likelihood of Confusion) Tiffany v. eBay, Inc., 576 F. Supp. 2d 463 (S.D.N.Y. 2008) (Likelihood of Confusion) Tri-Star Pictures, Inc. v. Unger, 42 F. Supp. 2d 296 (S.D.N.Y. 1999) (Secondary Meaning) (Likelihood of Confusion) Tri-Star Pictures, Inc. v. Unger, 14 F. Supp. 2d 339 (S.D.N.Y. 1998) (Secondary Meaning) (Likelihood of Confusion) Trouble v. The Wet Seal, Inc., 179 F. Supp. 2d 291 (S.D.N.Y. 2001) (Likelihood of Confusion) (Daubert/Admissibility Issues) Victoria’s Secret Stores v. Sexy Hair Concepts, LLC, 2009 U.S. Dist. LEXIS 30458 (S.D.N.Y. 2009) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Vista Food Exchange, Inc. v. Vistar Corp., 2005 U.S. Dist. LEXIS 42541 (E.D.N.Y. 2005) (Likelihood of Confusion) (Daubert/Admissibility Issues)

Second Circuit 269

Waddington North America Business Trust v. EMI Plastics, Inc., 2002 U.S. Dist. LEXIS 16634 (E.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion) Warner-Lambert Co. v. Schering-Plough Corp., 1991 U.S. Dist. LEXIS 14620 (S.D.N.Y. 1991) (False Advertising) WE Media, Inc. v. Cablevision Systems Corp., 2004 U.S. App. LEXIS 7379 (2d Cir. 2004) (Likelihood of Confusion) WE Media Inc. v. General Electric Co., 218 F. Supp. 2d 463 (S.D.N.Y. 2002) (Secondary Meaning) (Likelihood of Confusion) Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137 (2d Cir. 2005) (Likelihood of Confusion) Winner Intern. LLC v. Omori Enterprises, Inc., 60 F. Supp. 2d 62 (E.D.N.Y. 1999) (Likelihood of Confusion) Zeneca Inc. v. Eli Lilly and Co., 1999 U.S. Dist. LEXIS 10852 (S.D.N.Y. 1999) (False Advertising)

Third Circuit 270

Third Circuit A&H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 167 F. Supp. 2d 770 (E.D. Pa. 2001) (Likelihood of Confusion) A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 57 F. Supp. 2d 155 (E.D. Pa. 1999) (Likelihood of Confusion) A & H Sportswear Co., Inc. v. Victoria’s Secret Stores, Inc., 166 F.3d 197 (3d Cir. 1999) (Likelihood of Confusion) Astrazeneca LP v. Tap Pharmaceutical Products, Inc., 444 F. Supp 2d. 278 (D. Del. 2006) (False Advertising) (Daubert/Admissibility Issues) Binney & Smith v. Rose Art Industries, 2001 U.S. Dist. LEXIS 11827 (E.D. Pa. 2001) (Fame) Binney & Smith v. Rose Art Industries, 2000 U.S. Dist. LEXIS 18384 (E.D. Pa. 2000) (Secondary Meaning) Bracco Diagnostics, Inc. v. Amersham Health, Inc., 627 F. Supp. 2d 384 (D. N.J. 2009) (False Advertising) (Daubert/Admissibility Issues) Castrol, Inc. v. Pennzoil Quaker State Co., 169 F. Supp. 2d 332 (D. N.J. 2001) (False Advertising) Castrol, Inc. v. Pennzoil Quaker State Co., 2000 U.S. Dist. LEXIS 15336 (D. N.J. 2000) (False Advertising) The CIT Group, Inc. v. Citicorp, 20 F. Supp. 2d 775 (D. N.J. 1998) (Likelihood of Confusion) Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2004 U.S. App. LEXIS 18999 (3d Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Citizens Financial Group, Inc. v. Citizens Nat’l Bank of Evans City, 2003 U.S. Dist.LEXIS 25977 (W.D. Pa. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) CNB Financial Corp. v. CNB Community Bank, 2004 U.S. Dist. LEXIS 21483 (E.D. Pa. 2004) (Likelihood of Confusion) Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, (3d Cir. 2000) (Secondary Meaning) Componentone, L.L.C. v. Componentart, Inc., 2008 U.S. Dist. LEXIS 87066 (W.D. Pa. 2008) (Likelihood of Confusion)

Third Circuit 271

Diamond Triumph Auto Glass, Inc. v. Safelite Glass Corp., 441 F. Supp. 2d 695 (M.D. Pa. 2006) (False Advertising) E.T. Browne Drug Co. v. Cococare Products, Inc., 2008 U.S. App. LEXIS 16585 (3rd Cir. 2008) (Genericness) (Secondary Meaning) E.T. Browne Drug Co., Inc. v. Cococare Products, Inc., 2006 U.S. Dist. LEXIS 66515 (D. N.J. 2006) (Genericness) Hershey Foods Corp. v. Mars, Inc., 998 F. Supp 500 (M.D. Pa. 1998) (Fame) (Dilution) IDT Telecom, Inc. v. CVT Prepaid Solutions, LLC, 2009U.S. Dist. LEXIS 120355 (D. N.J. 2009) (False Advertising) Interstate Bank v. NetBank, Inc., 348 F. Supp. 2d 340 (D. N.J. 2004) (Likelihood of Confusion) Interstate Net Bank v. Netbank Inc. and Netbank, 221 F. Supp. 2d 513 (D. N.J. 2002) (Genericness) J&J Snack Foods, Corp. v. The Earthgrains Co., 2003 U.S. Dist. LEXIS 8040 (D. N.J. 2003) (Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues) J&J Snack Foods, Corp. v. The Earthgrains Co., 220 F. Supp. 2d 358 (D. N.J. 2002) (Descriptiveness/Suggestiveness) (Daubert/Admissibility Issues) J&J Snack Foods, Corp. v. Nestle USA, Inc.and The Earthgrains Co., 149 F. Supp. 2d 136 (D. N.J. 2001) (Genericness) The Joint Stock Society and The Russian American Spirits Co. v. UDV North America, Inc. and Pierre Smirnoff Co., 266 F.3d 164 (3d Cir. 2001) (False Advertising) Lucent Information Mgmt. Inc. v. Lucent Technologies Inc., 5 F. Supp. 2d 238 (D. Del. 1998) (Likelihood of Confusion) M.D. On-Line, Inc. v. WebMD Corp., 2005 U.S. Dist. LEXIS 23563 (D. N.J. 2005) (Likelihood of Confusion) Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 27681 (E.D. Pa. 2007) (False Advertising) (Daubert/Admissibility Issues) Merisant Co. v. McNeil Nutritionals, LLC, 2007 U.S. Dist. LEXIS 14780 (E.D. Pa. 2007) (False Advertising) Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 290 F.3d 578 (3d Cir. 2002) (False Advertising)

Third Circuit 272

Novartis Consumer Health, Inc. v. Johnson & Johnson-Merck Consumer Pharmaceuticals Co., 129 F. Supp. 2d 351 (D. N.J. 2000) (False Advertising) The Pep Boys Manny, Moe & Jack of California v. The Goodyear Tire & Rubber Co., 2002 U.S. Dist. LEXIS 5925 (E.D. Pa. 2002) (Likelihood of Confusion) Pernod Ricard USA LLC v. Bacardi U.S.A., Inc., 702 F. Supp. 2d 238 (D. Del. 2010) (False Advertising) Pharmacia Corp. v. GlaxoSmithKline Consumer Healthcare, L.P., 292 F. Supp. 2d 594 (D. N.J. 2003) (False Advertising) Pharmacia Corp. v. Alcon Laboratories, Inc., 201 F. Supp. 2d 335 (D. N.J. 2002) (Likelihood of Confusion) (Dilution) Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 266 (D. Del. 2010) (False Advertising) Schering-Plough Healthcare Products, Inc. v. Neutrogena Corp., 702 F. Supp. 2d 253 (D. Del. 2010) (False Advertising) Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 2007 U.S. Dist. LEXIS 29377 (E.D. Pa. 2007) (Likelihood of Confusion)

Fourth Circuit 273

Fourth Circuit Ale House Mgmt. V. Raleigh Ale House, 2006 U.S. Dist. LEXIS 98819 (E.D. N.C. 2006) America Online, Inc. v. AT&T Corp., 243 F.3d 812 (4th Cir. 2001) (Secondary Meaning) American Mensa, Ltd., v. Inpharmatica, Ltd., 2008 U.S. Dist. LEXIS 99394 (D. Md. 2008) (Fame) BellSouth Corp. v. White Directory Publishers Inc., 42 F. Supp. 2d 598 (M.D. N.C. 1999) (Genericness) Black & Decker Inc. v. Pro-Tech Power Inc. P & F, 26 F. Supp. 2d 834 (E.D. Va. 1998) (Secondary Meaning) CareFirst of Maryland, Inc. v. First Care, P.C., 422 F. Supp. 2d 592 (E.D. Va. 2006) (Likelihood of Confusion) CareFirst of Maryland, Inc. v. First Care, P.C., 2006 U.S. App. LEXIS 588 (4th Cir. 2006) (Likelihood of Confusion) (Dilution) CareFirst of Maryland, Inc. v. First Care, P.C., 350 F. Supp. 2d 714 (E.D. Va. 2004) (Likelihood of Confusion) Community First Bank v. Community Banks, 360 F. Supp. 2d 716 (D. Md. 2005) (Likelihood of Confusion) The Coryn Group II, LLC v. O.C. Seacrets, Inc., 2010 U.S. Dist. LEXIS 30719 (D. Md. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Dick’s Sporting Goods, Inc. v. Dick’s Clothing and Sporting Goods, Inc., 188 F.3d 501 (Table): 1999 WL 639165 (4th Cir. 1999), designated “Unpublished Disposition”. (Secondary Meaning) (Daubert/Admissibility Issues) Georgia Pacific Consumer Products, LP v. Von Drehle Corp., 618 F.3d 441 (4th Cir. 2010) (Likelihood of Confusion) Giant Brands, Inc. v. Giant Eagle, Inc., 228 F. Supp. 2d 646 (D. Md. 2002) (Likelihood of Confusion) Government Employees Ins. Co. v. Google, Inc., 2005 U.S. Dist. LEXIS 18642 (E.D. Va. 2005) (Likelihood of Confusion) Harrods Ltd. v. Sixty Internet Domain Names, 157 F. Supp. 2d 658 (E.D. Va. 2001) (Fame) (Likelihood of Confusion)

Fourth Circuit 274

High Voltage Beverages, LLC v. The Coca-Cola Co., 2009 U.S. Dist. LEXIS 122019 (W.D. N.C. 2009) (Likelihood of Confusion) Hunt Masters, Inc. v. Landry’s Seafood Restaurant, Inc., 240 F.3d 251 (4th Cir. 2001) (Genericness) IDV North America, Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815 (E.D. Va. 1998) (Likelihood of Confusion) JTH Tax, Inc. v. H&R Block Eastern Tax Services, Inc, 128 F. Supp. 2d 926 (E.D. Va. 2001) (False Advertising) The Learning Network, Inc. v. Discovery Communications, Inc., 153 F. Supp. 2d 785 (D. Md. 2001) (Likelihood of Confusion) (Daubert/Admissibility Issues) Lulu Enterprises, Inc. v. N-F Newsite, LLC, 2007 U.S. Dist LEXIS 78034 (E.D. N.C. 2007) (Likelihood of Confusion) Miguel Torres S.A. v. Cantine Mezzacorona S.C.A.R.L., 52 U.S.P.Q.2d 1557 (E.D. Va. 1999) (Likelihood of Confusion) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 177 (E.D. Va. 2010) (False Advertising) (Daubert/Admissibility Issues) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18404 (E.D. Va. 2010) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2010 U.S. Dist. LEXIS 18460 (E.D. Va. 2010) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 120200 (E.D. Va. 2009) (False Advertising) PBM Products, LLC v. Mead Johnson Nutrition Co., 2009 U.S. Dist. LEXIS 119755 (E.D. Va. 2009) (False Advertising) Pediamed Pharmaceuticals, Inc. v. Breckenridge Pharmaceutical, Inc., 419 F. Supp. 2d 715 (D. Md. 2006) (False Advertising) (Daubert/Admissibility Issues) Resorts of Pinehurst Inc. v. Pinehurst Nat’l Corp., 148 F.3d 417 (4th Cir. 1998) (Likelihood of Confusion) Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Utah Division of Travel Development, 170 F.3d 449 (4th Cir. 1999) (Fame) (Dilution)

Fourth Circuit 275

Rosetta Stone Ltd. v. Google Inc., 730 F. Supp. 2d 531 (E.D. Va. 2010) (Likelihood of Confusion) The Scotts Co. v. United Industries Corp., 315 F.3d 264 (4th Cir 2002) (False Advertising) Teaching Co. Ltd. Partnership v. Unapix Entm’t, Inc., 87 F. Supp. 2d 567 (E.D. Va. 2000) (Likelihood of Confusion) U.S. Search, LLC v. US Search.com Inc., 300 F.3d 517 (4th Cir 2002) (Secondary Meaning) X-IT Products, L.L.C. v. Walter Kidde Portable Equipment, Inc., 155 F. Supp. 2d 577 (E.D. Va. 2001) (Likelihood of Confusion)

Fifth Circuit 276

Fifth Circuit Bell v. Starbucks U.S. Brands Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005) (Likelihood of Confusion) (Dilution) Blendco, Inc. v. Conagra Foods, Inc., 2005 U.S. App. LEXIS 9075 (5th Cir. 2005) (Descriptiveness) The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008) (Fame) The Bd. of Regents, The Univ. of Texas System v. KST Electric, Ltd., 2007 U.S. Dist. LEXIS 96129 (W.D. Tex. 2007) (Daubert/Admissibility Issues) Bd. of Supervisors for Louisiana State Univ. v. Smack Apparel Co., 550 F.3d 465 (5th Cir. 2008) (Likelihood of Confusion) Bd. of Supervisors of the Louisiana State Univ. v. Smack Apparel Co., 438 F. Supp. 2d 653 (E.D. La. 2006) (Likelihood of Confusion) Brennan’s, Inc. v. Dickie Brennan and Co., Inc., 2002 U.S. Dist. LEXIS 28235 (E.D. La. 2002) (Likelihood of Confusion) Children’s Medical Center of Dallas v. Columbia Hospital at Medical City Dallas Subsidiary, 2006 U.S. Dist. LEXIS 9752 (N.D. Tex. 2006) (Secondary Meaning) (Daubert/Admissibility Issues) Citizens Nat’l Bank of Meridian v. The Citizens Bank of Philadelphia, 157 F. Supp. 2d 713 (S.D. Miss. 2001) (Likelihood of Confusion) Dallas Cowboys Football Club, Ltd. v. America’s Team Properties, Inc., 616 F. Supp. 2d 622 (N.D. Tex. 2009) (Likelihood of Confusion) The Great American Restaurant Co. v. Domino’s Pizza LLC, 2008 U.S. Dist. LEXIS 32495 (E.D. Tex. 2008) (Genericness) (Secondary Meaning) (Likelihood of Confusion) (Daubert/Admissibility Issues) Half Price Books, Records, Magazines, Inc. v. Barnesandnoble.Com, LLC, 2004 U.S. Dist. LEXIS 23691 (N.D. Tex. 2004) (Secondary Meaning) (Daubert/Admissibility Issues) Healthpoint, Ltd v. Ethex Corp., 2004 U.S. Dist. LEXIS 27500 (W.D. Tex. 2004) (False Advertising) Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22470 (W.D. Tex. 2001) (False Advertising)

Fifth Circuit 277

Healthpoint, Ltd. v. Stratus Pharmaceuticals, Inc., 2001 U.S. Dist. LEXIS 22229 (W.D. Tex. 2001) (False Advertising) Healthpoint, Ltd. v. Ethex Corp., 273 F. Supp. 2d 817 (W.D. Tex. 2001) (False Advertising) Henley v. Dillard Dep’t Stores, 46 F. Supp. 2d 587 (N.D. Tex. 1999) (Likelihood of Confusion) Honestech, Inc. v. Sonic Solutions, 725 F. Supp. 2d 573 (W.D. Ttex. 2010) (Secondary Meaning) Ironclad, L.P. v. Poly-America, Inc., 2000 U.S. Dist. LEXIS 10728 (N.D. Tex. 2000) (Likelihood of Confusion) Ironclad, L.P. v. Poly-America, Inc., 1999 U.S. Dist. LEXIS 16265 (N.D. Tex. 1999) (Likelihood of Confusion) Kensington Partners v. Cordillera Ranch, Ltd., 1998 U.S. Dist. LEXIS 23673 (W.D. Tex. 1998) (Secondary Meaning) Kinetic Concepts, Inc. v. Bluesky Medical Corp., 2006 U.S. Dist. LEXIS 60187 (W.D. Tex. 2006) (False Advertising) (Daubert/Admissibility Issues) Kinetic Concepts, Inc. v. Bluesky Medical Group Inc., 2005 U.S. Dist LEXIS 32353 (W.D. Tex. 2005) (False Advertising) (Dilution) KIS, S.A. v. Foto Fantasy, Inc., 240 F. Supp. 2d 608 (N.D. Tex. 2002) (Likelihood of Confusion) Landmark American Ins. Co. v. Rosie Ray, 2006 U.S. Dist. LEXIS 95517 (W.D. Tex. 2006) (False Advertising) MAC Sales, Inc. v. E.I. du Pont de Nemours & Co., 1996 WL 109289 (E.D. La.a 1996) (Breach of Contract) (Daubert/Admissibility Issues) March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 310 F. Supp. 2d 786 (N.D. Tex. 2003) (Genericness) (Secondary Meaning) March Madness Athletic Ass’n, L.L.C. v. Netfire, Inc., 162 F. Supp. 2d 560 (N.D. Tex. 2001) (Genericness) Mary Kay, Inc. v. Amy L. Weber, 601 F. Supp. 2d 839 (N.D. Tex. 2009) (Likelihood of Confusion) Oreck Holdings, L.L.C. v. Euro-Pro Corp., 2007 U.S. Dist. LEXIS 5830 (E.D. La. 2007) (Likelihood of Confusion)

Fifth Circuit 278

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998) (Secondary Meaning) (Likelihood of Confusion) Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 227 F.3d 489 (5th Cir. 2000) (False Advertising) Pizza Hut, Inc. v. Papa John’s Int’l, Inc., 80 F. Supp. 2d 600 (N.D. Tex. 2000) (False Advertising) (Daubert/Admissibility Issues) Powertrain Inc. v. American Honda Motor Co., Inc., 2007 U.S. Dist. LEXIS 55626 (N.D. Miss. 2007) (Secondary Meaning) RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 3528 (N.D. Tex. 2003) (Likelihood of Confusion) RaceTrac Petroleum, Inc. v. J.J.’s Fast Stop, Inc., 2003 U.S. Dist. LEXIS 1569 (N.D. Tex. 2003) (Likelihood of Confusion) Re/Max Int’l, Inc. v. Trendsetter Realty, LLC, 2009 U.S. Dist. LEXIS 79356 (S.D. Tex. 2009) (Likelihood of Confusion) Scott Fetzer Co. v. House of Vacuums Inc., 381 F.3d 477 (5th Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Scott O’Grady v. Twentieth Century Fox Film Corp., 2003 U.S. Dist LEXIS 24936 (E.D. Tex. 2003) (False Advertising) Sugar Busters LLC v. Brennan, 177 F.3d 258 (5th Cir. 1999) (Genericness) (Secondary Meaning) Tiffany & Broadway, Inc. v. Commissioner of Patents and Trademarks, 167 F. Supp. 2d 949 (S.D. Tex. 2001) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 2001 U.S. Dist. LEXIS 17468 (S.D. Tex. 2001) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 214 F.3d 658 (5th Cir. 2000) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 103 F. Supp. 2d 935 (S.D. Tex. 1999) (Likelihood of Confusion) Westchester Media Co. L.P. v. PRL United States Holdings Inc., 1998 U.S. Dist. LEXIS 11737 (S.D. Tex. 1998) (Likelihood of Confusion)

Sixth Circuit 279

Sixth Circuit AutoZone, Inc. and Speedbar, Inc. v. Tandy Corp., 373 F.3d 786 (6th Cir. 2004) (Secondary Meaning) Autozone, Inc. and Speedbar, Inc. v. Tandy Corp., 174 F. Supp. 2d 718 (M.D. Tenn. 2001) (Secondary Meaning) Citizens Banking Corp. v. Citizens Financial Group, Inc., 2009 U.S. App. LEXIS 8366 (6th Cir. (Secondary Meaning) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens Financial Group, Inc., 2008 U.S.Dist. LEXIS 36800 (E.D. Mich. 2008) (Secondary Meaning) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2008 U.S. Dist. LEXIS 547 (E.D. Mich. 2008) (Likelihood of Confusion) Citizens Banking Corp. v. Citizens First Bancorp, Inc., 2007 U.S. Dist. LEXIS 88325 (E.D. Mich. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) ETW Corp. v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) (Likelihood of Confusion) Gaylord Entm’t Co. v. Gilmore Entm’t Group, LLC, 187 F. Supp. 2d 926 (M.D. Tenn. 2001) (Genericness) General Conference Corp. of Seventh-Day Adventists v. Walter McGill, 2008 U.S. Dist. LEXIS 45526 (W.D. Tenn. 2008) (Genericness) General Motors Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006) (Secondary Meaning) (Likelihood of Confusion) Gibson Guitar Corp. v. Paul Reed Smith Guitars, LP, 325 F. Supp. 2d 841 (M.D. Tenn. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15129 (S.D. Ohio 2004) (False Advertising) The Iams Co. v. Nutro Products, Inc., 2004 U.S. Dist. LEXIS 15134 (S.D. Ohio 2004) (False Advertising) Innovation Ventures, LLC v. N.V.E., Inc., 2010 U.S. Dist. LEXIS 96004 (E.D. Mich. 2010) (Likelihood of Confusion) K’arsan Corp. v. Christian Dior Perfumes, Inc., 166 F.3d 1214 (6th Cir. 1998) (Likelihood of Confusion)

Sixth Circuit 280

Kellogg Co. v. Exxon Mobil Corp., 192 F. Supp. 2d 790 (W.D. Tenn. 2001) (Dilution) Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504 (6th Cir. 2007) (Likelihood of Confusion) Leelanau Wine Cellars, Ltd .v. Black & Red, Inc., 452 F. Supp. 2d 772 (W.D. Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Libbey Glass, Inc. v. Oneida Ltd., 61 F. Supp. 2d 700 (N.D. Ohio 1999) (Secondary Meaning) Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 703 F. Supp. 2d 671 (W.D. Ky. 2010) (Likelihood of Confusion) Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 U.S. Dist. LEXIS 16454 (E.D. Mich. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Powerhouse Marks LLC v. Chi Hsin Impex, Inc., 2006 WL 20523 (E.D. Mich. 2006) (Likelihood of Confusion) The Procter & Gamble Co. v. Georgia-Pacific Consumer Products LP, 2009 U.S. Dist. LEXIS 72052 (S.D. Ohio 2009) (Likelihood of Confusion) Rock & Roll Hall of Fame and Museum, Inc. v. Gentile Productions, 71 F. Supp. 2d 755 (N.D. Ohio 1999) (Secondary Meaning) (Likelihood of Confusion) Rocky Brands, Inc. v. Red Wing Shoe Co., Inc., 2009 U.S. Dist. LEXIS 122929 (S.D. Ohio 2009) (False Advertising) Safe Auto Ins. Co. v. State Automobile Mutual Inc. Co., 2009 U.S. Dist. LEXIS 94859 (S.D. Ohio 2009) (Likelihood of Confusion) Schneider Saddlery Co., Inc. v. Best Shot Pet Products Int’l, LLC, 2009 U.S. Dist. LEXIS 27227 (N.D. Ohio 2009) (Likelihood of Confusion) Static Control Components, Inc. v. Lexmark Int’l, Inc., 2007 U.S. Dist. LEXIS 32489 (E.D. Ky. 2007) (False Advertising) Volkswagen AG v. Dorling Kindersley Publishing, Inc., 614 F. Supp. 2d 793 (E.D. Mich. 2009) (Likelihood of Confusion) Wells Fargo & Co. v. WhenU.com, Inc., 293 F. Supp. 2d 734 (E.D. Mich. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2006 U.S. Dist. LEXIS 1378 (W.D. Mich. 2006) (Secondary Meaning) (Daubert/Admissibility Issues)

Sixth Circuit 281

Whirlpool Properties, Inc. v. LG Electronics U.S.A., Inc., 2005 U.S. Dist. LEXIS 30311 (W.D. Mich. 2005) (Secondary Meaning) Winchester Federal Savings Bank v. The Winchester Bank, Inc., 359 F. Supp. 2d 561 (E.D. Ky. 2004) (Secondary Meaning)

Seventh Circuit 282

Seventh Circuit AM General Corp. and General Motors Corp. v. DaimlerChrysler Corp., 311 F.3d 796 (7th Cir 2002) (Secondary Meaning) (Likelihood of Confusion) Atlas Electric Devices Co. v. Q-Panel Lab Products Corp., 2001 U.S. Dist. LEXIS 24308 (N.D. Ill. 2001) (Secondary Meaning) Baniel v. Guild, 2000 WL 1349254 (N.D. Ill. 2000) (Genericness) Best Vacuum, Inc. v. Ian Design, Inc., 2006 U.S. Dist. LEXIS 87260 (N.D. Ill. 2006) (Secondary Meaning) Blue Cross and Blue Shield Ass’n v. American Exp. Co., 1999 U.S. Dist. LEXIS 17994 (N.D. Ill. 1999) (Likelihood of Confusion) Bobak Sausage Co. v. A&J Seven Bridges, Inc., 2010 U.S. Dist. LEXIS 40737 (N.D. Ill. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Bretford Mfg., Inc. v. Smith System Mfg. Co., 116 F. Supp. 2d 951 (N.D. Ill. 2000) (Secondary Meaning) Breuer Electric Mfg. Co. v. Hoover Co., 48 U.S.P.Q.2d 1705 (N.D. Ill. 1998) (Likelihood of Confusion) Chattanoga Mfg., Inc. v. Nike, Inc., 140 F. Supp. 2d 917 (N.D. Ill. 2001) (Likelihood of Confusion) Competitive Edge, Inc. v. Staples, Inc., 2010 U.S. Dist. LEXIS 29678 (N.D. Ill. 2010) (Patent) (Daubert/Admissibility Issues) Eco Mfg. LLC v. Honeywell Int’l, Inc., 2003 U.S. Dist. LEXIS 11384 (S.D. Ind. 2003) (Likelihood of Confusion) Fort James Corp. v. Kimberly-Clark Tissue Co., 1999 U.S. Dist. LEXIS 16321 (N.D. Ill. 1999) (Likelihood of Confusion) Frank M. Sullivan III v. CBS Corp., 2004 U.S. App. LEXIS 20062 (7th Cir. 2004) (Likelihood of Confusion) Frank M. Sullivan, III v. CBS Corp., 2002 U.S. Dist. LEXIS 6625 (N.D. Ill. 2002) (Likelihood of Confusion) Georgia-Pacific Consumer Prod. LP v. Kimberly-Clark Corp., 2010 31540 (N.D. Ill. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues)

Seventh Circuit 283

Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 8369 (N.D. Ill. 2003) (Secondary Meaning) (Daubert/Admissibility Issues) Greenwich Industries, L.P. v. Specialized Seating, Inc., 2003 U.S. Dist. LEXIS 5940 (N.D. Ill. 2003) (Secondary Meaning) H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755 (7th Cir. 2007) (Likelihood of Confusion) Hot Wax Inc. v. Turtle Wax Inc., 27 F. Supp. 2d 1043 (N.D. Ill. 1998) (False Advertising) Hot Wax, Inc. v. Warsaw Chemical Co., Inc., 45 F. Supp. 2d 635 (N.D. Ill. 1999) (False Advertising) Invisible Fence, Inc. v. Perimeter Technologies, Inc., 2007 U.S. Dist. LEXIS 6664 (N.D. Ind. 2007) (Likelihood of Confusion) LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 73879 (N.D. Ill. 2010) (False Advertising) (Daubert/Admissibility Issues) LG Electronics v. Whirlpool Corp., 2010 U.S. Dist. LEXIS 87721 (N.D. Ill. 2010) (False Advertising) (Daubert/Admissibility Issues) LG Electronics U.S.A., Inc. v. Whirlpool Corp., 2009 U.S. Dist. LEXIS 89357 (N.D. Ill. 2009) (False Advertising) (Daubert/Admissibility Issues) Mead Johnson & Co. v. Abbott Laboratories, 209 F.3d 1032 (7th Cir. 2000) (False Advertising) Mead Johnson & Co. v. Abbott Laboratories, 201 F.3d 883 (7th Cir. 2000) (False Advertising) Mead Johnson & Co. v. Abbott Laboratories, 41 F. Supp. 2d 879 (S.D. Ind. 1999) (False Advertising) Miche Bag, LLC v. The Marshall Group, 2010 U.S. Dist. LEXIS 59900 (N.D. Ind. 2010) (Likelihood of Confusion) Moen, Inc. v. Foremost Int’l Trading, Inc., 38 F. Supp. 2d 680 (N.D. Ill. 1999) (Patent) (Daubert/Admissibility Issues) National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc., 57 F. Supp. 2d 665 (E.D. Wis. 1999) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues) National Football League Properties, Inc. and Green Bay Packers, Inc. v. Prostyle, Inc., 16 F. Supp. 2d 1012 (E.D. Wis. 1998) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)

Seventh Circuit 284

Native American Arts v. Earthdweller, Ltd. and The Waldron Corp., 2002 U.S. Dist. LEXIS 9750 (N.D. Ill. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Navistar Int’l Transportation Corp. v. Freightliner Corp., 52 U.S.P.Q.2d 1074 (N.D. Ill. 1998) (Likelihood of Confusion) Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir. 2004) (Descriptiveness) Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 22774 (N.D. Ill. 2003) (Descriptiveness) Peaceable Planet, Inc. v. Ty, Inc., 2003 U.S. Dist. LEXIS 14937 (N.D. Ill. 2003) (Descriptiveness) PTS Labs LLC v. Abbott Laboratories, 126 F. Supp. 2d 538 (N.D. Ill. 2000) (Patent) Puritan-Bennett Corp. v. Penox Technologies, Inc., 2004 U.S. Dist. LEXIS 6896 (S.D. Ind. 2004) (Likelihood of Confusion) (Patent) Sanfield Inc. v. Finlay Fine Jewelry Corp., 999 F Supp 1102 (N.D. Ill. 1998) (False Advertising) Sara Lee Corp. v. American Leather Products, Inc., 1998 U.S. Dist. LEXIS 11914 (N.D. Ill. 1998) (Secondary Meaning) (Likelihood of Confusion) Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 22246 (N.D. Ill. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Sears, Roebuck and Co. v. Menard, Inc., 2003 U.S. Dist. LEXIS 951 (N.D. Ill. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Simon Property Group, L.P. v. mySimon, Inc., 2003 U.S. Dist. LEXIS 5438 (S.D. Ind. 2003) (Secondary Meaning) Simon Property Group, L.P. v. mySimon, Inc., 282 F.3d 986 (7th Cir. 2002) (Likelihood of Confusion) Simon Property Group, L.P. v. mySimon, Inc., 2001 U.S. Dist. LEXIS 852 (S.D. Ind. 2001) (Likelihood of Confusion) Simon Property Group L.P. v. mySimon, Inc., 2000 U.S. Dist. LEXIS 12227 (S.D. Ind. 2000) (Fame) Simon Property Group L.P. v. mySimon, Inc., 104 F. Supp. 2d 1033 (S.D. Ind. 2000) (Likelihood of Confusion) (Daubert/Admissibility Issues)

Seventh Circuit 285

Sunstar, Inc. v. Alberto-Culver Co., Inc., 2007 U.S. Dist. LEXIS 62135 (N.D. Ill. 2007) (Likelihood of Confusion) Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir. 1998) (Secondary Meaning) Ty Inc. v. The Jones Group, Inc., 2001 U.S. Dist. LEXIS 18912 (N.D. Ill. 2001) (Secondary Meaning) Ty Inc. v. The Jones Group, Inc., 98 F. Supp. 2d 988 (N.D. Ill. 2000) (Secondary Meaning) Ty, Inc. v. Publications Int’l Ltd., 2000 U.S. Dist. LEXIS 15382 (N.D. Ill. 2000) (Copyright) Ty Inc. v. Softbelly’s Inc., 2006 WL 5111124 (N.D. Ill. 2006) (Secondary Meaning) Ty Inc. v. Softbelly’s, Inc., 353 F.3d 528 (7th Cir. 2003) (Genericness) Ty, Inc. v. Softbelly’s, Inc., 2001 U.S. Dist. LEXIS 1341 (N.D. Ill. 2001) (Genericness) (Secondary Meaning) Tylka v. Gerber Products Co., 1999 WL 495126 (N.D. Ill. 1999) (False Advertising) V & S Vin & Sprit Aktiebolag v. Cracovia Brands, Inc., 2004 U.S. Dist. LEXIS 17 (N.D. Ill. 2004) (Likelihood of Confusion)

Eighth Circuit 286

Eighth Circuit 3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 81094 (D. Minn. 2010) (Likelihood of Confusion) 3M Co. v. Pradeep Mohan, 2010 U.S. Dist. LEXIS 124672 (D. Minn. 2010) (Likelihood of Confusion) Am. Ass’n for Justice v. The Am. Trial Lawyers Ass’n, 698 F. Supp. 2d 1129 (D. Minn. 2010) (Likelihood of Confusion) American Equity Mortgage, Inc. v. Ray Vinson, Jr., 2005 U.S. Dist. LEXIS 32160 (E.D. Mo. 2005) (False Advertising) (Daubert/Admissibility Issues) American Italian Pasta Co. v. New World Pasta Co., 371 F.3d 387 (8th Cir. 2004) (False Advertising) Anheuser-Busch, Inc. v. VIP Products, LLC, 2008 U.S Dist. LEXIS 82258 (E.D. Mo. 2008) (Likelihood of Confusion) Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 9473 (D. Minn. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2010 U.S. Dist. LEXIS 81329 (D. Minn. 2010) (Likelihood of Confusion) Champagne Louis Roederer v. J. Garcia Carrion, S.A., 2008 U.S. Dist. LEXIS 56376 (D. Minn. 2008) (Likelihood of Confusion) Everest Capital Ltd., v. Everest Funds Mgmt., 393 F.3d 755 (8th Cir. 2005) (Likelihood of Confusion) Fair Isaac Corp. v. Experian Information Solutions, Inc., 2009 U.S. Dist. LEXIS 64022 (D. Minn. 2009) (Secondary Meaning) The First Nat’l Bank in Sioux Falls v. First Nat’l Bank So. Dakota, 2009 U.S. Dist. LEXIS 82980 (D. S.D. 2009) (Likelihood of Confusion) Ford Motor Co. v. Ford Financial Solutions, Inc., 103 F. Supp. 2d 1126 (N.D. Iowa 2000) (Secondary Meaning) (Likelihood of Confusion) (Dilution) Frosty Treats, Inc v. Sony Computer Entm’t America, Inc., 426 F.3d 1001 (8th Cir. 2005) (Secondary Meaning) (Likelihood of Confusion) Gateway, Inc. v. Companion Products, Inc., 384 F.3d 503; 2004 (8th Cir. 2004) (Likelihood of Confusion)

Eighth Circuit 287

Gateway, Inc. v. Companion Products, Inc., 2003 U.S. Dist. LEXIS 21461 (D. S.D. 2003) (Likelihood of Confusion) Gateway, Inc. v. Companion Products, Inc., 320 F. Supp. 2d 912 (D. S.D. 2002) (Likelihood of Confusion) Georgia –Pacific Consumer Products, LP v. Myers Supply, Inc., 621 F.3d 771 (8th Cir. 2010) (Likelihood of Confusion) Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS 63774 (W.D. Ark. 2009) (Likelihood of Confusion) Georgia-Pacific Consumer Product LP v. Myers Supply, Inc., 2009 U.S. Dist. LEXIS 54401 (W.D. Ark. 2009) (Likelihood of Confusion) Graham Webb Int’l v. Helene Curtis Inc., 17 F. Supp. 2d 919 (D. Minn. 1998) (Likelihood of Confusion) Heartland Bank v. Heartland Home Finance, Inc., 335 F.3d 810 (8th Cir. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Home Builders Ass’n of Great St. Lous v. L&L Exhibition Mgmt., Inc., 1999 U.S. Dist. LEXIS 23525 (E.D. Mo. 1999) (Secondary Meaning) Louis E. Kemp, Superior Seafoods, Inc. v. Bumble Bee Seafoods, Inc., 398 F.3d 1049 (8th Cir. 2005) (Likelihood of Confusion) Louis Kemp v. Bumble Bee Seafoods, Inc., 2002 U.S. Dist. LEXIS 19316 (D. Minn. 2002) (Likelihood of Confusion) Luigino’s Inc. v. Stouffer Corp., 170 F.3d 827 (8th Cir. 1999) (Likelihood of Confusion) Millennium Import Co. v. Sidney Frank Importing Co., Inc., 2004 U.S. Dist LEXIS 11871 (D. Minn. 2004) (False Advertising) Minnesota Mining and Mfg. Co. v. Beautone Specialties, Co., Ltd., 82 F. Supp. 2d 997 (D. Minn. 2000) (Secondary Meaning) Minnesota Specialty Crops, Inc. v. Minnesota Wild Hockey Club, LP, 2002 U.S. Dist. LEXIS 13991 (D. Minn. 2002) (Likelihood of Confusion) (Daubert/Admissibility Issues) Northwest Airlines, Inc. v. NWA Federal Credit Union, 2004 U.S. Dist Lexis 17766 (D. Minn. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues)

Eighth Circuit 288

PSK, LLC v. Randy Hicklin, 2010 U.S. Dist. LEXIS 127318 (N.D. Iowa 2010) (Genericness) (Secondary Meaning) Rainbow Play Systems, Inc. v. Backyard Adventure, Inc., 2009 U.S. Dist. LEXIS 93623 (S.D. S.D. 2009) (False Advertising) R.H. Donnelley Inc. v. USA Northland Directories, Inc., 2004 U.S. Dist. LEXIS 26902 (D. Minn. 2004) (Secondary Meaning) Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006) (Genericness) Schwan's IP, LLC, v. Kraft Pizza Co., 379 F. Supp. 2d 1016 (D. Minn. 2005) (Secondary Meaning) The Steak N Shake Co. v. The Burger King Corp., 323 F. Supp. 2d 983 (E.D. Mo. 2004) (Genericness) (Secondary Meaning) Transclean Corp. v. Bridgewood Services, Inc., 77 F. Supp. 2d 1045 (D. Minn. 1999) (False Advertising)

Ninth Circuit 289

Ninth Circuit A & M Records v. Napster, Inc., 239 F.3d 1004 (9th Cir. 2001) (Copyright) A & M Records v. Napster, Inc., 2000 U.S. Dist. LEXIS 20668 (N.D. Cal. 2000) (Copyright) A & M Records v. Napster, Inc., 114 F Supp 2d 896 (N.D. Cal. 2000) (Copyright) A & M Records v. Napster, Inc., 2000 WL 1009483) (N.D. Cal. 2000) (Copyright) adidas America, Inc. v. Kmart Corp., 2006 U.S. Dist. LEXIS 49766 (D. Or. 2006) (Likelihood of Confusion) adidas America, Inc. v. Payless Shoesource, Inc., 2008 U.S. Dist. LEXIS 69260 (D. Or. 2008) (Likelihood of Confusion) adidas America, Inc. v. Payless Shoesource, Inc., 529 F. Supp. 2d 1215 (D. Or. 2007) (Likelihood of Confusion) (Fame) adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 25141 (D. Or. 2002) (Likelihood of Confusion) adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 19592 (D. Or. 2002) (Likelihood of Confusion) adidas-Salomon AG and adidas America, Inc. v. Target Corp.; E.S. Originals, Inc.; and B.U.M. Int’l, Inc., 2002 U.S. Dist. LEXIS 2262 (D. Or. 2002) (Likelihood of Confusion) Aerus LLC v. ProTeam, Inc., 2007 U.S. Dist. LEXIS 97683 (S.D. Cal. 2007) (Secondary Meaning) Autodesk, Inc. v. Dassault Systemes Solidworks Corp., 2009 U.S. Dist. LEXIS 115007 (N.D. Cal. 2009) (False Advertising) Automobile Club of Southern California v. The Auto Club, Ltd., 2007 U.S. Dist. LEXIS 19221, (C.D. Cal. 2007) (Genericness) Avery Dennison Corp. v. Sumpton, 189 F.3d 868 (9th Cir. 1999) (Fame) Big Island Candies, Inc. v. The Cookie Corner, 269 F. Supp. 2d 1236 (D. Haw. 2003) (Genericness) Cairns v. Franklin Mint Co., 107 F. Supp. 2d 1212 (C.D. Cal. 2000) (Likelihood of Confusion) Cairns v. Franklin Mint Co., 24 F. Supp. 2d 1013 (C.D. Cal. 1998) (Likelihood of Confusion)

Ninth Circuit 290

California Board Sports, Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 82225 (S.D. Cal. 2007) (Secondary Meaning) Campagnolo S.R.L. v. Full Speed Ahead,Inc., 2010 U.S. Dist. LEXIS 46176 (W.D. Wash. 2010) (False Advertising) Charles R. Meeker, d/b/a The Meeker Vineyard v. Martin Meeker, 2004 U.S. Dist. LEXIS 22708 (N.D. Cal. 2004) (Secondary Meaning) (Daubert/Admissibility Issues) Chrysler Corp. v. Vanzant, 44 F. Supp. 2d 1062 (C.D. Cal. 1999) (Secondary Meaning) CKE Restaurant v. Jack In The Box, Inc., 494 F. Supp. 2d 1139 (C.D. Cal. 2007) (False Advertising) Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2007 U.S. Dist. LEXIS 2525 (C.D. Cal. 2007) (Genericness) Classic Foods Int’l Corp. v. Kettle Foods, Inc., 2006 U.S. Dist. LEXIS 97200 (C.D. Cal. 2006) (Likelihood of Confusion) Clicks Billiards Inc. v. Sixshooters Inc., 251 F.3d 1252 (9th Cir. 2001) (Secondary Meaning) ConsumerInfo.com, Inc. v. Money Management Int’l, Inc., 2008 U.S. Dist. LEXIS 79303 (C.D. Cal. 2008) (Likelihood of Confusion) Credit One Corp. v. Credit One Financial,Inc., 2009 U.S. Dist. LEXIS 99029 (C.D. Cal. 2009) (Secondary Meaning) CSC Brands LP v. Herdez Corp., 191 F. Supp. 2d 1145 (E.D. Cal. 2001) (Likelihood of Confusion) Cytosport, Inc. v. Vital Pharmaceuticals, Inc., 617 F. Supp. 2d 1051 (E.D. Cal. 2009) (Likelihood of Confusion) Don Henley v. Charles S. Devore, 2010 U.S. Dist. LEXIS 67987 (C.D. Cal. 2010) (Likelihood of Confusion) Duncan McIntosh Co. Inc. v. Newport Dunes Marina LLC, 324 F. Supp. 2d 1078 (C.D. Cal. 2004) (Likelihood of Confusion) Ecce Panis, Inc. v. Maple Leaf Foods USA, Inc., 2007 U.S. Dist. LEXIS 85780 (D. Ariz. 2007) (Secondary Meaning) (Likelihood of Confusion) Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 15297 (D. Or. 2004) (Likelihood of Confusion)

Ninth Circuit 291

Edge Wireless, LLC v. U.S. Cellular Corp., 2004 U.S. Dist. LEXIS 9074 (D. Or. 2004) (Likelihood of Confusion) E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006) (Likelihood of Confusion) Excelligence Learning Corp. v. Oriental Trading Co., Inc., 2004 U.S. Dist. LEXIS 30370 (N.D. Cal. 2004) (Secondary Meaning) Express, LLC v. Forever 21, Inc., 2010U.S. Dist. LEXIS 91705 (C.D. Cal. 2010) (Secondary Meaning) Federal Trade Commission v. John Stefanchik, 559 F.3d 924 (9th Cir. 2009) (False Advertising) Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 688 F. Supp. 2d. 1148 (D. Nev. 2010) (Likelihood of Confusion) Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 2010 U.S. Dist. LEXIS 109155 (C.D. Cal. 2010) (Likelihood of Confusion) Fortune Dynamic, Inc. v. Victoria’s Secret, 618 F.3d 1025 (9th Cir. 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Fuel Clothing Co., Inc. v. Safari Shirt Co., 2006 U.S. Dist. LEXIS 92052 (D. Or. 2006) (Likelihood of Confusion) Golden West Financial v. WMA Mortgage Services, 2003 U.S. Dist. LEXIS 4100 (N.D. Cal. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Google, Inc. v. American Blind & Wallpaper Factory, Inc., 2007 U.S. Dist. LEXIS 32450 (N.D. Cal. 2007) (Likelihood of Confusion) Not for Citation. GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, (9th Cir. 2000) (Likelihood of Confusion) Grupo Gigante v. Dallo & Co., Inc., 391 F.3d 1088 (9th Cir. 2004) (Secondary Meaning) (Fame) Grupo Gigante v. Dallo & Co., Inc., 119 F. Supp. 2d 1083 (C.D. Cal. 2000) (Secondary Meaning) (Fame) Hansen Beverage Co. v. Cytosport, Inc., 2009 U.S. Dist. LEXIS 12058 (C.D. Cal. 2009) (Likelihood of Confusion) Hansen Beverage Co. v. Vital Pharmaceutical, Inc., 2010 U.S. Dist. LEXIS 79218 (S.D. Cal. 2010) (False Advertising)

Ninth Circuit 292

Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 2005 U.S Dist. LEXIS 45810 (C.D. Cal. 2005) (False Advertising) (Daubert/Admissibility Issues) Hispanic Broadcasting Corp. v. Educational Media Foundation, 2003 U.S. Dist. LEXIS 24804 (C.D. Cal. 2003) (Likelihood of Confusion) Icon Enterprises Int’l, Inc. v. American Products Co., 2004 U.S. Dist. LEXIS 31080 (C.D. Cal. 2004) (Descriptiveness) (Likelihood of Confusion) (Daubert/Admissibility Issues) Instant Media, Inc. v. Microsoft Corp., 2007 U.S. Dist. LEXIS 61443 (N.D. Cal. 2007) (Likelihood of Confusion) Internet Specialties West, Inc. v. ISPWest, 2006 U.S. Dist. LEXIS 96361 (C.D. Cal. 2006) (Likelihood of Confusion) Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir. 2008) (Dilution) Joel D. Wallach v. Longevity Network, Ltd., 2006 U.S. Dist. LEXIS 97114 (C.D. Cal. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Joel D. Wallach v. Longevity, 2006 U.S. Dist. LEXIS 98787 (C.D. Cal. 2006) (Secondary Meaning) (Likelihood of Confusion) Kendall-Jackson Winery Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998) (Likelihood of Confusion) Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116622 (D. Nev. 2009) (Likelihood of Confusion) Kerzner Int’l Ltd. v. Monarch Casino & Resort, Inc., 2009 U.S. Dist. LEXIS 116624 (D. Nev. 2009) (Likelihood of Confusion) Kournikova v. General Media Communications, Inc., 2003 U.S. Dist. LEXIS 13159 (C.D. Cal. 2003) (Likelihood of Confusion) (Daubert/Admissibility Issues) Lanard Toys Ltd. v. Novelty Inc., 511 F. Supp. 2d 1020 (C.D. Cal. 2007) (Secondary Meaning) (Likelihood of Confusion) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2009 U.S. Dist. LEXIS 33923 (N.D. Cal. 2009) (Likelihood of Confusion) (Fame) Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 2008 U.S. Dist. LEXIS 87625 (N.D. Cal. 2008) (Secondary Meaning) (Likelihood of Confusion) (Dilution)

Ninth Circuit 293

M2 Software, Inc. v. Madacy Entm’t, 421 F.3d 1073 (9th Cir. 2005) (Likelihood of Confusion) (Daubert/Admissibility Issues) M2 Software, Inc. v. Viacom, Inc., 119 F. Supp. 2d 1061 (C.D. Cal. 2000) (Fame) Markwins Beauty Products, Inc. v. Mirage Cosmetics, Inc., No. CV 05-04917 MMM (VBKx) (C.D. Cal. 2005) (Likelihood of Confusion) Mattel, Inc. v. MCA Records, Inc., 28 F. Supp. 2d 1120 (C.D. Cal. 1998) (Likelihood of Confusion) Mattel Inc. v. Walking Mountain Productions, 353 F.3d 792 (9th Cir. 2003) (Copyright) Metro-Goldwyn-Mayer Pictures, Inc. v. Mark Brown, 2004 U.S. Dist. LEXIS 29562 (C.D. Cal. 2004) (Likelihood of Confusion) Microsoft Corp. v. Lindows.com, Inc., 2002 U.S. Dist. LEXIS 24616, (W.D. Wash. 2002) (Genericness) Mutual Pharmaceutical Co. v. Ivax Pharmaceuticals, Inc., 459 F. Supp. 2d 925 (C.D. Cal. 2006) (False Advertising) The Nautilus Group, Inc. v. Savvier, Inc., 427 F. Supp. 2d 990 (W.D. Wash. 2006) (Likelihood of Confusion) Newport Pacific Corp. v. Moe’s Southwest Grill, LLC, 2006 U.S. Dist. LEXIS 74481 (D. Or. 2006) (Likelihood of Confusion) (Dilution) Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 66686 (E.D. Cal. 2007) (Dilution) Nike, Inc. v. Nikepal Int’l, Inc., 2007 U.S. Dist. LEXIS 16966 (E.D. Cal. 2007) (Dilution) Nissan Motor Co. v. Nissan Computer Corp., 2007 U.S. Dist. LEXIS 90487 (C.D. Cal. 2007) (Dilution) Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004) (Fame) Nissan Motor Co. v. Nissan Computer Corp., 89 F. Supp. 2d 1154 (C.D. Cal. 2000) (Likelihood of Confusion) Oracle Corp. v. Light Reading, Inc., 233 F. Supp. 2d 1228 (N.D. Cal. 2002) (Likelihood of Confusion) PerfumeBay.com Inc. v. eBay Inc., 506 F. 3d 1165 (9th Cir. 2007) (Likelihood of Confusion) (Dilution)

Ninth Circuit 294

Playboy Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020 (9th Cir. 2004) (Likelihood of Confusion) (Daubert/Admissibility Issues) Pom Wonderful LLC v. The Coca Cola Co., 727 F. Supp. 2d 849 (C.D. Cal. 2010) (False Advertising) Premier Nutrition, Inc. v. Organic Food Bar, Inc., 2008 U.S. Dist. LEXIS 78353 (C.D. Cal. 2008) (Genericness) (Secondary Meaning) Quia Corp. v. Mattel, Inc., 2010 U.S. Dist. LEXIS 68237 (N.D. Cal. 2010) (Likelihood of Confusion) R&R Partners, Inc. v. Dorothy Tovar, 447 F. Supp. 2d 1141 (D. Nev. 2006) (Likelihood of Confusion) (Daubert/Admissibility Issues) Rain Bird Corp. v. Hit Products Corp., 2004 U.S. Dist LEXIS 20790 (C.D. Cal. 2004) (Likelihood of Confusion) Red Bull GmbH v. Matador Concepts, Inc., 2006 U.S. Dist. LEXIS 96764 (C.D. Cal. 2006) (Likelihood of Confusion) Resource Lenders, Inc. v. Source Solutions, Inc., 2005 U.S. Dist. LEXIS 38732 (E.D. Cal. 2005) (Secondary Meaning) Richard Bach v. Forever Living Products U.S., Inc., 473 F. Supp. 2d 1110 (W.D. Wash. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) Seed Lighting Design Co., Ltd. v. Home Depot, 2005 U.S. Dist. LEXIS 44741 (N.D. Cal. 2005) (Secondary Meaning) Sharper Image Corp. v. Target Corp., 425 F. Supp. 2d 1056 (N.D. Cal. 2006) (Likelihood of Confusion) Shuffle Master Inc. v. Yehia Awada, 2006 U.S. Dist. LEXIS 66418 (D. Nev. 2006) (Secondary Meaning) Skechers U.S.A., Inc. v. Vans, Inc., 2007 U.S. Dist. LEXIS 88635 (C.D. Cal. 2007) (Likelihood of Confusion) Sony Pictures Entm’t, Inc. v. Fireworks Entm’t Group, Inc., 137 F. Supp. 2d 1177 (C.D. Cal. 2001) (Secondary Meaning) (Daubert/Admissibility Issues) Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist LEXIS 32660 (D. Or. 2005) (Likelihood of Confusion) (Dilution)

Ninth Circuit 295

Starbucks Corp. v. Samantha Lundberg, 2005 U.S. Dist. LEXIS 46167 (D. Or. 2005) (Dilution) Stuhlbarg Int’l Sales Co., Inc. v. John D. Brush and Co., Inc., 240 F.3d 832 (9th Cir. 2001) (Genericness) Surfvivor Media, Inc. v. Survivor Productions, 406 F.3d 625 (9th Cir. 2005) (Likelihood of Confusion) Thane Int’l Inc. v. Trek Bicycle Corp., 305 F.3d 894 (9th Cir 2002) (Likelihood of Confusion) Thane Int’l Inc. v. Trek Bicycle Corp., 53 U.S.P.Q.2d 1523 (C.D. Cal. 1999) (Likelihood of Confusion) Tokidoki, LLC v. Fortune Dynamic, Inc., 2009 U.S. Dist. LEXIS 65665 (C.D. Cal. 2009) (Likelihood of Confusion) Trafficschool.com, Inc. v. Edriver, Inc., 633 F. Supp. 2d 1063 (C.D. Cal. 2008) (False Advertising) Trovan, Ltd. v. Pfizer, Inc., 2000 U.S. Dist. LEXIS 7522 (C.D. Cal. 2000) (Likelihood of Confusion) Ugg Holdings, Inc. v. Clifford Severn, et al., 2005 U.S. Dist. LEXIS 45783 (C.D. Cal. 2005) (Genericness) Visa Int’l Service Ass’n v. JSL Corp., 610 F.3d 1088 (9th Cir. 2010) (Dilution) Visa Int’l Service Ass’n v. JSL Corp., 590 F. Supp. 2d 1306 (D. Nev. 2008) (Dilution) Visa Int’l Service Ass’n v. JSL Corp., 533 F. Supp. 2d 1089 (D. Nev. 2007) (Dilution) Visa Int’l Service Ass’n v. JSL Corp., 2006 U.S. Dist. LEXIS 81923 (D. Nev. 2006) (Dilution) (Daubert/Admissibility Issues) Walker & Zanger, Inc. v. Paragon Industries, Inc., 2007 U.S. Dist. LEXIS 35520 (N.D. Cal. 2007) (Secondary Meaning) YKK Corp. v. Jungwoo Zipper Co., 213 F. Supp. 2d 1195 (C.D. Cal. 2002) (Likelihood of Confusion) Zipee Corp. and Zipee.com, Inc. v. United States Postal Service, 140 F. Supp. 2d 1084 (D. Or. 2000) (Genericness)

Ninth Circuit 296

Tenth Circuit 1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132389 (D. Utah 2010) (Secondary Meaning) (Likelihood of Confusion) 1-800 Contacts, Inc. v. Lens.com, Inc., 2010 U.S. Dist. LEXIS 132948 (D. Utah 2010) (Likelihood of Confusion) (Daubert/Admissibility Issues) Amazon Inc. v. Cannondale Inc., 56 U.S.P.Q.2d 1568 (D.C. Colo. 2000) (False Endorsement) Big Dog Motorcycles, L.L.C. v. Big Dog Holdings, Inc., 2005 U.S. Dist. LEXIS 31059 (D. Kan. 2005) (Likelihood of Confusion) Big O Tires, Inc. v. Bigfoot 4X4, Inc. and Vulcan Chain and Webbing Products, Inc., 167 F. Supp. 2d 1216 (D. Colo. 2001) (Likelihood of Confusion) Robert Donchez v. Coors Brewing Co., 392 F.3d 1211 (10th Cir. 2004) (Genericness) First Savings Bank, F.S.B. v. U.S. Bancorp, 117 F. Supp. 2d 1061 (D. Kan. 2000) (Secondary Meaning) General Motors Co. v. Urban Gorilla, LLC, 2010 U.S. Dist. LEXIS 136711 (D. Utah 2010) (Secondary Meaning) (Likelihood of Confusion) Hill’s Pet Nutrition, Inc. v. Nutro Products, Inc., 258 F. Supp. 2d 1197 (D. Kan. 2003) (False Advertising) Hogdon Powder Co., Inc. v. Alliant Techsystems, Inc., 512 F. Supp. 2d 1178 (D. Kan. 2007) (Likelihood of Confusion) (Daubert/Admissibility Issues) Medi-Flex, Inc. v. NicePak Products, Inc., 422 F. Supp. 2d 1242 (D. Kan. 2006) (Likelihood of Confusion) Nestle Prepared Foods Co. v. Pocket Foods Corp., 2006 U.S. Dist. LEXIS 76213 (D. Colo. 2006) (Likelihood of Confusion) Primedia Intertec Corp. v. Technology Marketing Corp., 35 F. Supp. 2d 809 (D. Kan. 1998) (Likelihood of Confusion) (Daubert/Amissibility Issues) The Procter & Gamble Co. v. Randy L. Haugen, 2008 U.S. Dist. LEXIS 47857 (D. Utah 2008) (False Advertising) (Daubert/Admissibility Issues) Sally Beauty Co., Inc., Marianna Imports, Inc. v. Beautyco, Inc., 304 F.3d 964 (10th Cir 2002) (Likelihood of Confusion)

Tenth Circuit 297

Sara Lee Corp. v. Sycamore Family Bakery Inc., 2009 U.S. Dist. LEXIS 100554 (D. Ut. 2009) (Likelihood of Confusion) Univ. of Kansas v. Larry Sinks, 2008 U.S. Dist. LEXIS 23763 (D. Kan. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Vail Associates, Inc. v. Vend-Tel-Co., Ltd., 516 F.3d 853 (10th Cir. 2008) (Likelihood of Confusion) (Daubert/Admissibility Issues) Winning Ways, Inc. v. Holloway Sportswear, Inc., 913 F. Supp. 1454 (D. Kan. 1996) (Secondary Meaning) (Daubert/Admissibility Issues)

Eleventh Circuit 298

Eleventh Circuit Alltel Corp. v. Actel Integrated Communications Inc., 42 F. Supp. 2d 1265 (S.D. Ala. 1999) (Likelihood of Confusion) Atlanta Allergy & Asthma Clinic, P.A. v. Allergy & Asthma of Atlanta, LLC, 685 F. Supp. 2d 1360 (N.D. Ga. 2010) (Secondary Meaning) (Daubert/Admissibility Issues) BellSouth Advertising & Publishing Corp. v. Lambert Publishing, 45 F. Supp. 2d 1316 (S.D. Ala. 1999) (False Advertising) The Bd. of Regents of the Univ. System of Georgia d/b/a The Georgia Institute of Technology v. Buzas Baseball, Inc., d/b/a The Salt Lake Buzz, 176 F. Supp. 2d 1338 (N.D. Ga. 2001) (Likelihood of Confusion) Carnival Corp. v. SeaEscape Casino Cruises, Inc., 74 F. Supp. 2d 1261 (S.D. Fla. 1999) (Likelihood of Confusion) (Fame) Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS 82638 (N.D. Ga. 2010) (Likelihood of Confusion) Flowers Bakeries Brands, Inc. v. Interstate Bakeries Corp., 2010 U.S. Dist. LEXIS 66061 (N.D. Ga. 2010) (Likelihood of Confusion) General Conference Corp. of Seventh-Day Adventists v. Perez, 97 F. Supp. 2d 1154 (S.D. Fla. 2000) (Secondary Meaning) Hi Ltd. v. Winghouse of Florida, 2004 U.S. Dist LEXIS 30687, (M.D. Fla. 2004) (Daubert/Admissibility Issue Hickson Corp. v. Northern Crossarm Co., Inc., 357 F.3d 1256 (11th Cir. 2004) (False Advertising) Integrity Inc. v. Integrity Online Int’l Holdings, Inc., Civ. No. 1:00-CV-1291-WCO (N.D. Ga. 2002) (Likelihood of Confusion) ((Daubert/Admissibility Issues) Nightlight Systems, Inc. v. Nitelites Franchise Systems, Inc., 2007 U.S. Dist. LEXIS 95565 (N.D. Ga. 2007) (Genericness) (Daubert/Admissibility Issues) Popular Bank of Florida v. Banco Popular de Puerto Rico, 9 F. Supp. 2d 1347 (S.D. Fla. 1998) (Likelihood of Confusion) Smith v. Wal-Mart Stores, Inc., 537 F. Supp. 2d 1302 (N.D. Ga. 2008) (Likelihood of Confusion) (Dilution) (Daubert/Admissibility Issues)

Eleventh Circuit 299

Trilink Saw Chain, LLC v. Blount, Inc., 583 F. Supp. 2d 1293 (N.D. Ga. 2008) (Secondary Meaning) (Daubert/Admissibility Issues) Univ. of Alabama Bd. of Trustees v. New Life Art Inc., 2009 U.S. Dist. LEXIS 120238 (N.D. Ala. 2009) (Likelihood of Confusion) Vital Pharmaceuticals, Inc. v. American Body Building Products, LLC, 2007 U.S. Dist. LEXIS 3659 (S.D. Fla. 2007) (Secondary Meaning)

D. C. Circuit 300

D.C. Circuit Avocados Plus Inc. v. Mike Johanns, 2007 U.S. Dist. LEXIS 4572 (D. D.C. 2007) (First Amendment) Avocados Plus Inc. v. Mike Johanns, 421 F. Supp. 2d 45 (D. D.C. 2006) (First Amendment) Globalaw Ltd. v. Carmon & Carmon Law Office, 452 F. Supp. 2d 1 (D. D.C. 2006) (Genericness) Pro-Football, Inc. v. Suzan Shown Harjo, 284 F. Supp. 2d 96 (D. D.C. 2003) (Scandalous/Disparaging) Winner Int’l Royalty Corp. v. Wang, 11 F. Supp. 2d 18 (D. D.C. 1998) (Patent)

Federal Circuit 301

Federal Circuit Continental Plastic Containers Inc. v. Owens-Brockway Plastic Products Inc., 141 F.3d 1073 (Fed. Cir. 1998) (Likelihood of Confusion) In re Hotels.com, L.P., 573 F.3d 1300 (Fed. Cir. 2009) (Genericness) Leonard Studio Equipment, Inc. v Desmar Corp., 173 F.3d 435 (Table): 1998 WL 712452 (CAFC), designated “Unpublished Disposition” (Fed. Cir. 1998) (Likelihood of Confusion) In re Spirits Int’l, N.V., 563 F.3d 1347 (Fed. Cir. 2009) (Geographically Deceptively Misdescriptive) In re Steelbuilding.com, 415 F.3d 1293 (Fed. Cir. 2005) (Secondary Meaning) Vita-Mix Corp. v. Basic Holding, Inc., 581 F.3d 1317 (Fed. Cir. 2009) (Patent Infringement)

T.T.A.B. 302

Trademark Trial & Appeal Board In re 1-800 CONTACTS, INC., 2002 T.T.A.B. LEXIS 247 (T.T.A.B. 2002) (Genericness) (Secondary Meaning) 7-Eleven, Inc. v. Mark D. Morrison, 2008 WL 2385970 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. America Online v. Prabhu Mohapatra, 2004 T.T.A.B. LEXIS 455 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 244 (T.T.A.B. 2006) (Secondary Meaning) This opinion is not citable as a precedent of the T.T.A.B. American Flange & Mfg. Co., Inc. v. Rieke Corp., 2006 T.T.A.B. LEXIS 195 (T.T.A.B. 2006) (Secondary Meaning) American Girl, LLC v. Barry Epstein, 2009 T.T.A.B. LEXIS 412 (T.T.A.B. 2009) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Anvil Knitwear, Inc. v. Success Ware Inc., 2004 T.T.A.B. LEXIS 361 (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. Arrow Trading Co., Inc. v. Victorinox A.G., 2003 T.T.A.B. LEXIS 310 (T.T.A.B. 2003) (Genericness) This disposition is not citable as a precedent of the T.T.A.B.. Arrow Trading Co., Inc. v. Victorinox A.G., 2000 T.T.A.B. LEXIS 202 (Genericness) (Daubert/Admissibility Issues) (T.T.A.B. 2000) This disposition is not citable as precedent of the T.T.A.B. Ava Enterprises, Inc. v. Audio Boss USA, Inc., 2006 T.T.A.B. LEXIS 17 (T.T.A.B. 2006) (Likelihood of Confusion) Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 2008 T.T.A.B. LEXIS 16 (T.T.A.B. 2008) (Secondary Meaning) (Likelihood of Confusion) The Black Dog Tavern Co., Inc. v. Elizabeth A. Frechette, 2006 T.T.A.B. LEXIS 835 (T.T.A.B. 2006) (Likelihood of Confusion) In re Borysiewicz, 2004 T.T.A.B. LEXIS 622 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Bridgestone Firestone No. Amer. Tire, LLC v. Federal Corp., 2010 T.T.A.B. LEXIS 294 (T.T.A.B. 2010) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B.

T.T.A.B. 303

Bridgestone/Firestone North American Tire, LLC v. Silverstone Berhad, 2003 T.T.A.B. LEXIS 142 (T.T.A.B. 2003) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B.. Buell Motorcycle Co. v. Honda, 2003 T.T.A.B. LEXIS 359 (T.T.A.B. 2003) (Genericness) This disposition is not citable as a precedent of the T.T.A.B.. In re Callaway Golf Co., 2001 T.T.A.B. LEXIS 599 (T.T.A.B. 2001) (Genericness) This disposition is not citable as precedent of the T.T.A.B. Carl Walther Gmbh, In re, 2010 T.T.A.B. LEXIS 410 (T.T.A.B. 2010) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Cartier N.W., In re, 2010 T.T.A.B. LEXIS 337 (T.T.A.B. 2010) (Secondary Meaning) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Century 21 Real Estate Corp. v. New Century Services Corp., 2007 T.T.A.B. LEXIS 149 (T.T.A.B. 2007) (Fame) This opinion is not a precedent of the T.T.A.B. Chanel, Inc. v. Frank Mauriello, Opposition Nos. 91168097 and 91172654, Cancellation No. 92046246 (T.T.A.B. 2010) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Coty US Inc. and Coty Cosmetics Inc. v. Frontier Cooperative Herbs, 2002 T.T.A.B. LEXIS 144 (T.T.A.B. 2002) (Likelihood of Confusion) In re Credit.com, Inc., 2008 T.T.A.B. LEXIS 321 (T.T.A.B. 2008) (Genericness) This opinion is not a precedent of the T.T.A.B. In re DaimlerChrysler AG, 2001 T.T.A.B. LEXIS 557 (T.T.A.B. 2001) (Descriptiveness) This disposition is not citable as precedent of the T.T.A.B. Danish Dairy Bd., Inc. v. The Ministry of Commerce, Cyprus, 1999 T.T.A.B. LEXIS 482 (T.T.A.B. 1999) (Genericness) This disposition is not citable as precedent of the T.T.A.B. Day-Timers, Inc. v. Medley & Associates, Inc., 2001 T.T.A.B. LEXIS 299 (Fame) This disposition is not citable as precedent of the T.T.A.B. Diamonique Corp. v. Wieck Family, Ltd., 2004 T.T.A.B. LEXIS 271 (T.T.A.B. 2004) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. Duke Univ. v. Haggar Clothing Co., 2003 T.T.A.B. LEXIS 408 (T.T.A.B. 2003) (Likelihood of Confusion) (Fame) This disposition is not citable as precedent of the T.T.A.B.

T.T.A.B. 304

Duramax Marine, LLC v. R.W. Fernstrum & Co., 2006 T.T.A.B. LEXIS 306 (T.T.A.B. 2006) (Secondary Meaning) E.I. duPont de Nemours and Co. v. duPont Publishing, Inc., 2001 T.T.A.B. LEXIS 740 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Factory Five Racing, Inc. v. Carroll Shelby, 2010 T.T.A.B. LEXIS 402 (T.T.A.B. 2010) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Ferrero S.P.A. v. Destileria La Central, S.A., 2000 T.T.A.B. LEXIS 359 (T.T.A.B. 2000) (Fame) This disposition is not citable as a precedent of the T.T.A.B. Freeman v. Nat’l Ass’n of Realtors, 2002 T.T.A.B. LEXIS 381 (T.T.A.B. 2002) (Genericness) Google Inc. v. Nikolaus Gubernator, 2009 T.T.A.B. LEXIS 81 (T.T.A.B. 2009) (Fame) This opinion is not a precedent of the T.T.A.B. Google Inc. v. Pivot Design, Inc., 2007 T.T.A.B. LEXIS 183 (T.T.A.B. 2007) (Fame) This opinion is not a precedent of the T.T.A.B. The Guardian Life Ins. Co. of America v. David P. England, 2002 T.T.A.B. LEXIS 625 (T.T.A.B. 2002) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B.. Hard Rock Cafe Int’l (USA) Inc. v. Elsea, 56 U.S.P.Q.2d 1504 (T.T.A.B. 2000) (Fame) (Daubert/Admissibility Issues) Harjo v. Pro-Football Inc., 50 U.S.P.Q.2d 1705 (T.T.A.B. 1999) (Scandalous/Disparaging) Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 829 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Haverly Systems, Inc. v. Omni Flow Computers, Inc., 2001 T.T.A.B. LEXIS 629 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Hormel Foods Corp. and Hormel Foods, LLC v. Spam Arrest LLC, 2005 T.T.A.B. LEXIS 144 (T.T.A.B. 2005) (Dilution/Blurring) This disposition is not citable as a precedent of the T.T.A.B. In re Hotels.com, L.P., 2008 T.T.A.B. LEXIS 60 (T.T.A.B. 2008) (Genericness) iMedica Corp. v. Medica Health Plans, 2007 T.T.A.B. LEXIS 140 (T.T.A.B. 2007) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. In re Indian Industries, Inc., 2004 T.T.A.B. LEXIS 621 (T.T.A.B. 2004) (Descriptiveness) This disposition is not citable as a precedent of the T.T.A.B.

T.T.A.B. 305

In re Ivanko Barbell Co., 2004 T.T.A.B. LEXIS 345 (T.T.A.B. 2004) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. Jacob Zimmerman v. Nat’l Ass’n of Realtors, 2004 T.T.A.B. LEXIS 180 (T.T.A.B. 2004) (Genericness) Kevin T. McCarney dba Poquito Mas v. Una Mas, Inc., 2004 T.T.A.B. LEXIS 51 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. In re Kimpton Hotel & Restaurant Group Inc., 55 U.S.P.Q.2d 1154 (T.T.A.B. 2000) (Geographically Deceptively Misdescriptive) King Bio Pharmaceuticals, Inc. v. King Pharmaceuticals, Inc., 2002 T.T.A.B. LEXIS 280 (T.T.A.B. 2002) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Kohler Co. v. Kohler Homes, 2008 T.T.A.B. LEXIS 551 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Longevity Network, Ltd. v. Joel D. Wallach, 2004 T.T.A.B. LEXIS 171 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Meier’s Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., 2008 T.T.A.B. LEXIS 678 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. Missiontrek Ltd. Co. v. Onfolio, Inc., 2005 T.T.A.B. LEXIS 524 (T.T.A.B. 2005) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Motion Picture Ass’n of America, Inc. v. Respect Sportswear, Inc., 2005 T.T.A.B. LEXIS 223 (T.T.A.B. 2005) (Fame) This disposition is not citable as a precedent of the T.T.A.B. Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 2010 T.T.A.B. LEXIS 225 (T.T.A.B. 2010) (Fame) (Dilution) (Daubert/Admissibility Issues) This opinion is a precedent of the T.T.A.B. In re Network Associates Technology, Inc., 2005 T.T.A.B. LEXIS 27 (T.T.A.B. 2005) (Genericness) This disposition is not citable as a precedent of the T.T.A.B. Nextel Communications, Inc. v. Motorola, Inc., 2009 T.T.A.B. LEXIS 443 (T.T.A.B. 2009) (Secondary Meaning) Nextel Communications, Inc. v. Motorola, Inc., 2006 T.T.A.B. LEXIS 166 (T.T.A.B. 2006) (Secondary Meaning) This opinion is not citable as a precedent of the T.T.A.B.

T.T.A.B. 306

The Oakland Corp. v. Nylok Fastener Corp., 1999 T.T.A.B. LEXIS 787 (T.T.A.B. 1999) (Secondary Meaning) This disposition is not citable as a precedent of the T.T.A.B. OMS Investments, Inc. v. Central Garden & Pet Co., 2006 T.T.A.B. LEXIS 274 (T.T.A.B. 2006) (Likelihood of Confusion) This opinion is not citable as a precedent of the T.T.A.B. Order Sons of Italy in America v. Memphis Mafia Inc., 52 U.S.P.Q.2d 1364 (T.T.A.B. 1999) (Scandalous/Disparaging) Physicians Health Plan, Inc. v. Michigan HMO Plans, Inc., 1999 T.T.A.B. LEXIS 800 (T.T.A.B. 1999) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Pioneer Kabushiki Kaisha v. Hitachi High Technologies America, Inc., 2005 T.T.A.B. LEXIS 184 (T.T.A.B. 2005) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Purl NYC, LLC v. Ellen Rodgers, 2008 T.T.A.B. LEXIS 672 (T.T.A.B. 2008) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. QVC, Inc. v. Home Shopping Network, Inc., 1999 T.T.A.B. LEXIS 751 (T.T.A.B. 1999) (Genericness) This disposition is not citable as precedent of the T.T.A.B. Saint-Gobain Corp. v. 3M Co., 2007 T.T.A.B. LEXIS 82 (T.T.A.B. 2007) (Secondary Meaning) This opinion is a precedent of the T.T.A.B. Sara Lee Corp. v. Amine Mahmoud, 2007 T.T.A.B. LEXIS 147 (T.T.A.B. 2007) (Likelihood of Confusion) This opinion is not a precent of the T.T.A.B. Sara Lee Corp. v. Goldstone Hosiery Co., 2001 T.T.A.B. LEXIS 204 (T.T.A.B. 2001) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Sara Lee Corp. v. Kayser-Roth Corp., 2004 T.T.A.B. LEXIS 146 (T.T.A.B. 2004) (Likelihood of Confusion) This disposition is not citable as precedent of the T.T.A.B. Schwan’s Sales Enterprises, Inc. v. Kraft Pizza Co., 2006 T.T.A.B. LEXIS 190 (T.T.A.B. 2006) (Genericness) This opinion is not citable as a precedent of the T.T.A.B. Seagate Technology, Inc. v. Seagate Office Products, Inc., 2000 T.T.A.B. LEXIS 622 (T.T.A.B. 2000) (Fame) This disposition is not citable as precedent of the T.T.A.B. Societe Des Produits Nestle S.A. v. La Cibeles, Inc., 2001 T.T.A.B. LEXIS 93 (T.T.A.B. 2001) (Fame) This disposition is not citable as precedent of the T.T.A.B.

T.T.A.B. 307

In re Spirits Int’l N.V., 2008 T.T.A.B. 6 (T.T.A.B. 2008) (Geographically Deceptively Misdescriptive Starbucks U.S. Brands, LLC v. Marshall S. Ruben, 2006 T.T.A.B. LEXIS 54 (T.T.A.B. 2006) (Likelihood of Confusion) In re Steelbuilding.com, Inc., 2007 T.T.A.B. LEXIS 122 (T.T.A.B. 2007) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 2009 T.T.A.B. LEXIS 132 (T.T.A.B. 2009) (Secondary Meaning) In re Sunburst Products Inc., 51 U.S.P.Q.2d 1843 (T.T.A.B. 1999) (Secondary Meaning) Tea Bd. of India v. The Republic of Tea, Inc., 2006 T.T.A.B. LEXIS 330 (T.T.A.B. 2006) (Genericness) Team Air Express, Inc. v. Alliance Shippers, Inc., 2007 T.T.A.B. LEXIS 110 (T.T.A.B. 2007) (Likelihood of Confusion) This opinion is not a precedent of the T.T.A.B. In re U-Haul Int’l, Inc., 2003 T.T.A.B. LEXIS 484 (T.T.A.B. 2003) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B. U S West, Inc. v. Hatten Communications Holding Co., Inc., 2002 T.T.A.B. LEXIS 620 (T.T.A.B. 2002) (Likelihood of Confusion) This disposition is not citable as a precedent of the T.T.A.B. Wagner Spray Tech Corp. v. Graco, Inc., 2003 T.T.A.B. LEXIS 343 (T.T.A.B. 2003) (Secondary Meaning) This disposition is not citable as a precedent of the T.T.A.B. Wal-Mart Stores, Inc. v. Franklin Loufrani, 2009 T.T.A.B. LEXIS 113 (T.T.A.B. 2009) (Secondary Meaning) This opinion is not a precedent of the T.T.A.B. Warner-Lambert Co. v. Nabisco, Inc., 1999 T.T.A.B. LEXIS 143 (T.T.A.B. 1999) (Descriptiveness) This disposition is not citable as a precedent of the T.T.A.B. The William Carter Co. v. H.W. Carter & Sons, Inc., 2004 T.T.A.B. LEXIS 115 (T.T.A.B. 2004) (Secondary Meaning) This disposition is not citable as precedent of the T.T.A.B.